When is renewing a trademark not worth it?

It’s easy to assume that if you own a trademark, it must be valuable. After all, you registered the trademark to begin with, so it makes sense to keep renewing it, right? However, renewing a trademark can easily become just something that your business does, rather than something it analyses, assesses and ensures is necessary and cost-effective.

As any trademark professional knows, many companies own multiple trademarks that are achieving nothing for them at all. Perhaps the trademark covers a product that no longer exists, perhaps you registered a mark and then decided not to use that particular name, or perhaps you have two trademarks representing more or less the same thing.

There may be many different reasons why you would continue to have trademarks in your portfolio that you don’t need, but the most likely reason is that you are renewing a trademark simply out of habit. For time-poor departments, it may be more pragmatic to pay the trademark renewals to mitigate the risk of a mistake, as assessing whether a trademark is worth renewing can take time.

Similarly, many trademark owners struggle to find the time and resources to analyse their portfolios properly. But with internal staff changes over the years and the knock-on effect of changing agents in various jurisdictions, it’s almost certain that there will be duplicates, gaps and ‘holes’ in IP portfolios, meaning that it’s likely you have both useless registrations as well as vulnerabilities due to under-registration. Your strategy for renewing a trademark should take into account this information.

When should a trademark be renewed?

As with most of your IP portfolio management, the decision of whether to renew a mark starts with a clear assessment of the status of your current assets. We work with our clients to audit their portfolios, establishing the trademarks they own, how they map to their countries of operation, and the status of each application, including completed registrations, pending registrations, pending oppositions and so on.

The results allow you to see clearly where you might be wasting time and money in your portfolio, as well as identifying potential gaps to fill. Our team will then work with you to help you understand where you can avoid renewing a trademark, but also where you have, for example, missing classes or countries in your registrations.

Potential issues that are sometimes raised in the audit include redundant registrations, or ‘double’ trademarks, which can be deleted or not renewed; and more subjectively, whether there are registrations that are similar to others in the portfolio, which can be allowed to lapse.

The key advantage of conducting a trademark audit for your trademark renewal strategy is that it gives you the right information on which to base your decisions. Novagraaf will work closely with you to assess your portfolio and present relevant information to enable you to decide quickly and accurately what registrations you don’t need to renew. In the past, more than 90% of our clients have discovered superfluous trademarks during this audit process. Identifying these will save you money and time.

The other major advantage of this process is that it streamlines your external relationships. With Novagraaf, you only have to liaise with a single point of contact – this means that you have fewer stakeholders to deal with, fewer potential weak spots in the process, and fewer chances for anything to go wrong. Once you’ve decided to go ahead with an audit, everything is taken care of. And then all you have to do is make decisions on renewing a trademark based on the most accurate, clear information available. Perhaps most importantly, you then have the peace of mind of knowing that you’re covered. You can demonstrate not only that you know the state of play of your trademark portfolio, but also that you’re taking the right action for the right reasons!

Novagraaf can help you clean your trademark portfolio to ensure you don’t waste time or money on renewing unnecessary marks. Download our white paper on IP auditing or contact our team to find out more.