By Paul Kruse

Last week we talked about the importance of having a trademark administrator. Here is a detailed list of what you should expect from yours:

A trademark administrator will periodically audit a company’s records  to:

• Identify all  active trademark registrations currently owned by or assigned to the company  broken down by issuing country or entity.


• Identify all  pending trademark applications currently owned by or assigned to the company  broken down by issuing country or entity.


•  Identify all  trademark registrations and applications abandoned, cancelled or expired in the  past twenty-four months broken down by issuing country or entity.


• Specify whether  the trademarks appearing in such applications or registrations are either still  being used or for which there is an intention to use at any point during the  next twelve months.


• Provide a copy  of all trademark clearance searches and/or opinions relating to the  availability of a trademark obtained in the past twenty-four months.


• Identify which  of the searched trademarks are being used or for which there is an intention to  use at any point during the next twelve months.


• If applicable,  provide examples of all tags, labels, instruction manuals, containers and  product packaging used for any and all of the company’s goods.


• If applicable,  provide examples of signs, photographs, brochures or advertisements for any and  all of the company’s goods and services.


• Identify all  trademarks the company has considered adopting in the past twelve months.


• Identify any  and all of the company trademarks that have been the subject of a potential or  actual trademark dispute being either asserted by or asserted against the  company.


• Identify any  and all third party trademarks which the company knows or has reason to believe  conflict, or which others have claimed conflict, with those owned or licensed  by the company.


• Identify any  litigation (including administrative proceedings before a government body)  involving a claim of trademark infringement and/or unfair competition in which  the company was a party.


• Identify all  agreements and/or licenses (including those terminated or expired within the  past twelve months and those that have not yet begun) whereby the company is  given the right to use a third party’s trademarks.


• Identify all  agreements and/or licenses (including those terminated or expired within the  past twelve months) whereby the company has given to a third party the right to  use any of the company’s trademarks.


• Provide any and  all trademark assignments involving trademarks currently being used by the  company including those where use of the trademarks stopped within the  preceding twelve months and those where use of the trademarks is contemplated  to begin at any point during the next twelve months.


• Identify any  and all domain names currently owned by the company.

Once information about the portfolio of marks is consolidated, active  management can begin.  For example, uniform  use of marks in the marketplace can be assured.   Core marks can be identified and focused upon.  Expansion  of trademarks can be decided based on a company’s strategic interests.  Licensing programs outside a company’s  traditional space can prove surprisingly lucrative.  With a trademark administrator in place, brand  extension opportunities can be easily identified and analyzed.

A trademark administrator also generates company wide awareness of the  value of the company’s marks.  This encourages  the proper use of marks within a company as well as a heightened awareness of  the need to protect marks in the marketplace.

Finally, by placing responsibility for a portfolio of marks with a  trademark administrator, a company will be able to easily grant security  interests in its marks if desired or ready them for sale in the event of an  asset purchase, merger or acquisition.

Paul Kruse is Best Lawyers 2012 Trademark Lawyer of the Year and  creator of CoreFour, a Trademark Vigilance Program.