Establishing Corporate Trademark Procedures
Because trademarks can be so valuable to a corporation, it is essential for companies to implement internal procedures aimed at protecting those marks. These procedures should govern the creation, registration, and defending of the corporation’s trademarks.
Selecting the mark
IP managers should have a solid understanding of the trademark process. That manager should also educate the employees at the company responsible for generating new trademark ideas. This will save a lot of work and frustration by eliminating the creation of weak marks from the outset. Weak marks are those that are descriptive (“preferred”), suggestive (Citi-Bank as a hip, urban bank) or worse yet, generic (“Light” Beer). Strong marks generally have little to no connection to the product (“Apple” computers). The stronger the mark, the easier it is to defend against infringement.
Once selected, a proposed mark should be passed to whatever person or group is in charge of clearing the mark. The clearance group or individual should be given the proposed mark, the services for which the mark will be used, and a potential marketing timetable for its introduction into the market.
Registering the mark
While going through clearance, a proposed mark can be informally checked for originality using a preliminary trademark search. In-house or outside counsel can conduct the search quickly, just to make sure there are no obvious competing marks already registered. This will also help eliminate some marks if several were proposed. The preliminary search can be completed on the United States Patent and Trademark Office website, where registered and pending marks are listed.
If the proposed mark passes the preliminary search, a full search should be conducted using an attorney. If the mark survives the full search, it should be queued up for registration.
Defending the mark
It is especially important for a corporation to have procedures in place to defend trademarks. Depending on the size of the company, that could mean an in-house IP litigation team, or it could mean go-to outside counsel well versed in trademark protection. Trademarks survive as long as they are protected, and the owner of the mark must be the watchful eye and vigilant defender of its mark.
The procedures described above address the core life cycle of a corporate trademark. But a truly effective corporate trademark program requires additional layers of policy and process that many companies overlook until a problem arises. The following components should be part of any corporation’s trademark management infrastructure.
Large corporations often accumulate trademark portfolios across multiple jurisdictions, product lines, and business units over many years. Without a systematic inventory process, trademarks can lapse due to missed maintenance deadlines, be improperly abandoned through non-use, or be undermined by inconsistent use across different parts of the organization. A trademark audit — conducted periodically by in-house or outside counsel — ensures the corporation has an accurate picture of what marks it owns, what registrations are active in which jurisdictions, what maintenance filings are coming due, and whether all registered marks are being used as required to maintain their validity.
The importance of maintaining a live trademark portfolio cannot be overstated. Under Section 8 of the Lanham Act, 15 U.S.C. § 1058, registered trademarks must be maintained by filing declarations of use between the fifth and sixth year after registration, between the ninth and tenth year, and every tenth year thereafter. Missing these maintenance filings results in cancellation of the registration — a loss that can be extremely difficult or impossible to remedy.
Trademark rights can be eroded or lost through failure to police them. Courts have found that trademark owners who fail to take prompt action against known infringers may be estopped from later asserting their rights — or may even lose their marks to genericness if they allow widespread unauthorized use to continue unchecked. The fate of once-powerful marks like “escalator,” “thermos,” and “aspirin” stands as a warning to corporations that complacency in trademark enforcement has real consequences.
An effective trademark monitoring program uses a combination of automated watching services — which alert the IP team to new applications at the USPTO and foreign trademark offices that are similar to the company’s registered marks — and manual monitoring of the marketplace for unauthorized uses. Monitoring should extend to internet search results, e-commerce platforms, domain name registrations, and social media, where infringement and counterfeiting are increasingly prevalent.
One of the most overlooked aspects of corporate trademark management is ensuring that internal users — marketing teams, product developers, salespeople, and external agencies — use the company’s trademarks correctly. Improper use of a trademark can undermine its strength and distinctiveness. Trademarks should always be used as adjectives modifying a generic noun (“KLEENEX tissues,” not “kleenexes”), never as verbs or nouns. They should be distinguished from surrounding text using capitalization, bold, or special fonts. The ® symbol should be used with federally registered marks; ™ should be used with unregistered marks to assert common law rights.
Internal trademark use guidelines, distributed to all relevant employees and agency partners, are a practical mechanism for ensuring consistent, legally appropriate use of the company’s marks.
When a corporation licenses its trademarks to third parties — for use in co-branded products, franchise arrangements, or other commercial contexts — it must maintain quality control over the licensee’s use of the mark. The quality control requirement is not merely a best practice; it is a legal necessity. Courts have found that trademark owners who grant naked licenses — licenses without adequate quality control provisions and oversight — risk abandonment of their marks. Under a naked license theory, the trademark owner’s failure to control quality results in the mark no longer serving its fundamental function of identifying the source and quality of goods, destroying the mark’s legal validity.
Trademark licensing agreements should specify quality standards, require samples and inspections, grant the licensor the right to audit the licensee’s use, and impose consequences for non-compliant use. These provisions are not just formalities — they are the contractual record that demonstrates the licensor’s ongoing quality control efforts.
Corporations operating internationally must understand that trademark rights are territorial. A U.S. trademark registration provides no protection in foreign countries. Companies with international operations or expansion plans need a strategy for securing trademark protection in the jurisdictions where their goods and services are sold or where their brand has meaningful recognition.
The Madrid Protocol provides a cost-effective mechanism for filing trademark applications in multiple countries through a single international application administered by the World Intellectual Property Organization (WIPO). While not a substitute for individual national registrations in key markets, the Madrid System simplifies the international filing process and reduces costs for corporations with broad international trademark programs.
Revision Legal provides comprehensive trademark counsel to corporations, from developing internal trademark procedures through portfolio management, enforcement, and international strategy. Our trademark attorneys work with IP managers, general counsel, and business leaders to design trademark programs that protect brand assets efficiently and effectively. Contact us today to discuss your corporation’s trademark needs.
If you have questions about establishing or improving your corporation’s trademark program, contact Revision Legal today. Our trademark attorneys work with IP managers and general counsel across industries to design procedures that protect trademark assets efficiently and cost-effectively.
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