Panel addresses trademark protection

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Chicago—Careful planning, prioritization and communication are necessary to successfully manage a trademark portfolio, according to a panel of intellectual property experts who spoke Tuesday at a presentation titled “Managing and Enforcing a Trademark Portfolio in a Global Downturn” at the Chicago office of global law firm Howrey LLP.

Businesses should consider their budget when deciding whether to register marks or prosecute infringement, but should not allow cost concerns to diminish their long-term objectives, the panelists said.

“One of the things most challenging is to keep the long-term perspective throughout the ups and downs. … If the budget starts to take over business, it can feel unfocused because you’re simply reactionary,” said panelist Katherine Basile, a Howrey trademark partner.

Michele McCoy, senior intellectual property counsel at Playboy Enterprises, advised businesses to communicate consistently across their legal, marketing and finance departments. Marketers often fail to recognize the risks in using unregistered marks and the costs associated with filing for registration. Both must be weighed before determining any sales or marketing initiatives, McCoy said.

Basile also encouraged collaboration, saying marketers should create internal tools, such as a Web site containing the classification and status of trademarks, and documentation concerning how and why past trademark decisions were made.

Finally, Basile urged marketers to familiarize themselves with trademark law to better understand what aspects of their brand can and cannot be protected.

“Be sure that if you have limited advertising dollars, you put them behind something you can own,” she said.

—Chelsea Ely

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