Trademark Portfolio Management Toolkit: Budgets, Audits, Docketing, and Reporting

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This toolkit treats a trademark portfolio as an operating program with a budget, a control environment, and a reporting line, rather than as a pile of certificates. It builds the four systems every program needs — an inventory of record, a docket with real redundancy, an audit cadence, and a reporting layer — and shows how each one fails when it is left to a single spreadsheet and a single person. It sets out a four-tier taxonomy that assigns filing, watching, enforcement, and maintenance policy by tier, works the prune-or-keep decision with the six specific rights a lapse actually forfeits, and lays out four budget models with realistic government fees under 37 C.F.R. § 2.6 and defensible professional-fee ranges. It carries a mid-market outdoor-gear company with 143 U.S. registrations, 61 foreign registrations, and 340 domains through tiering, a quarterly audit calendar, a 22 percent budget cut, and a one-page board dashboard built on seven metrics that a director can actually read. Every cross-referenced Marksy document is annotated with what it covers, who it is for, and when in the workflow to reach for it, and the toolkit closes with a branching reading path, a primary-authorities table, the templates that do the work, and the neighbouring toolkits worth having open.

IP and Technology > Trademarks | Toolkit | Published 2 March 2025 - Updated 12 February 2026 | Casey Scott McKay - marksy.us

Summary. A trademark portfolio is an operating program with a budget, a control environment, and a reporting line — not a pile of certificates in a drawer. This toolkit builds the four systems every program needs: an inventory of record, a docket with real redundancy, an audit cadence, and a reporting layer. It supplies a four-tier taxonomy that assigns filing, watching, enforcement, and maintenance policy by tier; a prune-or-keep analysis that names the six rights a lapse actually forfeits; four budget models with current government fees and defensible professional-fee ranges; and a seven-metric board dashboard. A mid-market outdoor-gear company runs through all of it, including a 22 percent budget cut. Every cross-referenced document is annotated with what it covers, who it is for, and when to reach for it.

Keywords: trademark portfolio management · portfolio tiering · trademark docketing · docket redundancy · annual trademark audit · portfolio inventory · prune or keep analysis · trademark budget model · cost per mark · board reporting · deal readiness · chain of title · identification reconciliation · watch service triage · trademark marking · domain portfolio · foreign associate fees · legal spend forecasting · portfolio governance · brand guidelines

Start Here

Most trademark portfolios are not managed. They accumulate. Someone files a mark, someone else files another, a firm changes, a paralegal leaves, an acquisition arrives with forty registrations and a spreadsheet nobody has opened, and one day the general counsel is asked what the company owns and cannot answer in under three weeks.

This toolkit is for the person who has to answer. That is usually one of four readers: in-house counsel or a trademark paralegal who owns the docket and the budget; outside counsel running a client's portfolio as a standing engagement rather than a series of matters; a founder or operator at the point where informal management stops working, somewhere between the tenth and thirtieth mark; and the CFO or board member who has been handed a number and wants to know what it buys.

It answers three questions.

  1. What is actually in the portfolio, and what does each item earn its keep for? Inventory, taxonomy, and tiering.
  2. What does the program cost to run, and what should be cut? Docket architecture, audit cadence, prune-or-keep economics, and budget models.
  3. Who is accountable, and what does the board see? Governance, metrics, and deal-readiness.

It deliberately does not re-teach the maintenance filings themselves. Sections 8, 9, 15, and 71, excusable non-use, the post-registration audit, and the mechanics of abandonment live next door in the Trademark Maintenance and Survival Toolkit. This toolkit is about the program that decides which filings get made, by whom, on what budget, and how anyone knows it happened.

If you read only one thing, read Trademark Due Diligence in Mergers and Acquisitions: An IP Buyer's Guide — and read it about your own portfolio. It is written for a buyer's counsel, which is exactly why it is the best management standard available: it is a stranger's list of every question your file has to survive. Its three-source rule for building a schedule of marks, its chain-of-title decision tree, and its use-and-specimen audit are the audit program most in-house teams never write for themselves. If your portfolio would embarrass you in that guide's Stage 3, you have found this year's work.

The Portfolio as a Program

A portfolio has four asset classes, and most owners can only see the first one. There are registered and applied-for marks, federal and state. There are unregistered marks — house brands, sub-brands, taglines, and trade dress that carry real common-law rights and appear on no register anywhere. There are domains and social handles, which travel with the brand but sit in a different vendor account under a different renewal calendar, usually controlled by marketing. And there are agreements — licenses, coexistence and consent agreements, settlement agreements, and permission-to-use letters — each of which quietly redefines what the marks are allowed to do. A program that tracks only the first class will be surprised by the other three, always at the worst moment.

Against those assets run four cost drivers, and they behave very differently.

Maintenance cost is inevitable, predictable, and back-loaded. A registration issued today produces no bill for five years, then bills twice in six years, then every ten years forever. That shape is the source of most portfolio budget failures: the year the first big cohort of registrations reaches its Section 8 window looks like a spending problem, and it is not — it is the bill for decisions made five years earlier. 15 U.S.C. §§ 1058, 1059.

Filing cost is discretionary and business-driven. It arrives when marketing launches something, and it arrives late, because marketing did not tell legal. This is the cost line where policy actually helps: a written filing standard that says which launches get a full clearance search, which get a knockout, and which get neither will change the number more than any negotiation with a firm.

Enforcement cost is lumpy and partially unavoidable. Watch services are cheap and predictable; the disputes they surface are neither. A program that budgets enforcement as an average will be wrong every single year — high in the quiet years, catastrophically low in the year somebody launches a confusingly similar brand with real money behind it.

Correction cost is invisible until it is enormous. Recording an assignment while the assignor still exists costs a fee and an hour. Reconstructing a chain of title after the assignor dissolved costs a quiet-title problem and a discount in a deal.

Sitting under all four is the structural fact that defines modern portfolio work: your file is private and your record is public. Everything the Office knows about your marks — the identification, the specimens, the owner of record, the assignment history, every sworn statement anyone has made — is visible to any competitor with a browser and an afternoon. Since the Trademark Modernization Act, a stranger who thinks your identification is padded can force the question for a $400 petition without ever meeting you. 15 U.S.C. §§ 1066a, 1066b. The management consequence is blunt: a portfolio is only as strong as its worst public statement, and the worst public statement is almost always an over-broad identification of goods that nobody has revisited since filing.

The programs that work share four systems.

An inventory of record. One list, one owner, one definition of truth, reconciled against the public record rather than against itself.

A docket with redundancy. Not a calendar. A system of record, an independent verification layer, and a named human with a named backup for every deadline.

An audit cadence. Not an event. A quarterly rhythm in which each workstream comes up once a year on a fixed date, so that "the annual audit" is never a two-week fire drill someone can defer.

A reporting layer. A short, stable set of metrics that a non-lawyer can read, produced on the same schedule whether or not anything went wrong. A report only produced when there is bad news trains the board to read every report as bad news.

The rest of this toolkit builds those four, then prices them.

Theme 1 — Taxonomy: Knowing What You Own

Halvorsen Outdoor Group makes packs and insulated bottles in Duluth. When its new general counsel arrived in January, the "portfolio" was a 143-row spreadsheet maintained by a paralegal who had left in October, plus whatever the firm had. The reconciliation took eleven days and found: nine registrations the spreadsheet did not list, four the spreadsheet listed that had been cancelled in 2023, two owned by an entity dissolved in the 2021 restructuring, and 340 domains on a corporate card in the marketing department's name.

That is a completely ordinary result. Build the inventory from three independent sources and reconcile the differences, exactly as a buyer would: the client's internal records, the public register (TSDR and the USPTO assignment database for the United States, Madrid Monitor and foreign associate reports for everything else), and the business itself — a survey of what marketing, sales, and each product line is actually using in the market today. The third source is the one everybody skips, and it is the one that finds the unregistered marks and the shadow portfolio.

Theme 2 — Tiering: Not Every Mark Deserves the Same Program

Tiering is the single highest-leverage decision in portfolio management, and most owners never make it explicitly. They make it implicitly, badly, by treating every mark the same until the budget breaks and then cutting whatever is due that month.

A tier is a service level, not a compliment. It fixes, in advance, how a mark gets filed, watched, enforced, and maintained — so that the answer to "should we oppose this?" is a policy lookup rather than a fresh argument. Halvorsen's tiers, with realistic all-in annual costs per mark including government fees, professional fees, watch, and an amortized share of the maintenance cycle:

| Tier | What qualifies | Filing policy | Watch | Enforcement | Maintenance | Annual cost/mark | |---|---|---|---|---|---|---| | 1 — Core | House mark, or any brand over 10% of revenue | Word + logo, every class actually used, top 15 markets, defensive domains and handles | Full: federal, state, common-law, domain, marketplace | Act on every confusable filing and every commercial use | Never lapses; GC signature required to abandon | $2,500–6,000 | | 2 — Growth | Product-line brands with a roadmap | Word mark, home market plus top three export markets, real classes only | Class-restricted federal watch | Identical and near-identical uses in the same channel | Renew on standing instruction; review at each Section 8 | $600–1,500 | | 3 — Tactical | Campaigns, taglines, limited runs, seasonal SKUs | Usually no registration; ™ notice and a dated common-law file | None | Only on bad faith or free-riding | None | $0–300 | | 4 — Legacy / defensive | Acquired, discontinued, or blocking registrations | No new filings | None | None | Documented keep-or-drop decision at every renewal | $325–1,000 |

Three rules make tiering hold.

Tier assignments are made with the business, in writing, once a year. A lawyer guessing at revenue attribution will guess wrong. Halvorsen's marketing director moved two marks from Tier 3 to Tier 1 in ninety seconds because both were about to headline a national retail rollout that legal had not heard about.

Tier 4 is a waiting room, not a resting place. Every Tier 4 mark carries a decision date. If nobody will defend keeping it at the next renewal, it goes.

A mark can only be Tier 1 in the countries where the business will actually be. Tiering is two-dimensional — brand importance times market importance. A Tier 1 brand in a market you will never enter is a Tier 4 registration wearing a Tier 1 label, and it will cost you every ten years forever.

Theme 3 — Docket Architecture and Redundancy

Larkspur Naturals lost its best-known registration to an email address. The correspondence address of record still pointed to the associate who had filed the application in 2016; she left her firm in 2022; the Office's courtesy reminder for the Section 8 bounced into a disabled mailbox; the in-house calendar entry had been made by a contract paralegal who set it for the sixth anniversary rather than the window opening at the fifth, and then set the reminder for the day of. Nobody was negligent in an interesting way. The registration is gone.

A docket is three layers, and a program that has only one of them will eventually produce that story.

Layer 1 — the system of record. One database, commercial or built, holding for every property: mark, type, owner of record, operating entity, serial and registration numbers, filing basis, classes, full identification text, registration date, the complete deadline ladder, correspondence address, foreign counsel, tier, and the responsible human. Docket the entire ladder the day the certificate issues — Section 8 window open and close, grace expiry, Section 15 window, the ten-year Sections 8 and 9 window, and, for a Section 66(a) registration, both the Section 71 date under 15 U.S.C. § 1141k and the WIPO renewal date, which do not coincide.

Layer 2 — independent verification. Once a quarter, pull the live status of every U.S. property from TSDR and diff it against Layer 1. The docket is never permitted to be the only source of truth about itself, for the same reason a bank reconciles to the statement rather than to its own ledger. This one control catches cancelled registrations, changed owners of record, recorded security interests nobody told legal about, and — most usefully — Office actions that went to a stale correspondence address.

Layer 3 — human redundancy. Every deadline has a named owner and a named backup, both real people, both on the reminder distribution. No deadline may be owned solely by a role-based inbox, because role inboxes are where accountability goes to die. The reminder ladder runs at twelve months, six months, ninety days, thirty days, and seven days before the window closes, with automatic escalation to the tier owner if the ninety-day reminder is not acknowledged.

Four more controls pay for themselves:

For counsel, docket failure is also a professional-responsibility problem: it is a diligence failure under ABA Model Rule 1.3 and, when the client is not told, a communication failure under Rule 1.4. Malpractice carriers price trademark practices on their docketing controls for a reason.

Theme 4 — The Annual Audit, Run as a Quarterly Cadence

"Annual audit" describes the coverage, not the schedule. Run as a single event, it becomes a two-week scramble that gets deferred in the years it is most needed. Run as a cadence, each workstream lands once a year on a fixed date and takes a day.

| Quarter | Workstream | Output | |---|---|---| | Q1 | Inventory reconciliation against TSDR, Madrid Monitor, WHOIS, and the assignment database; chain-of-title check on every property | Exception list; confirmatory assignments and recordations queued | | Q2 | Use and specimen sweep; identification reconciliation good by good; specimen library refresh | Deletion list for the next declaration; captured specimens dated and filed | | Q3 | Tier review and prune-or-keep session with the business; next-year budget build | Signed tier table; funded budget with a named owner per line | | Q4 | Agreement compliance — licenses, coexistence, consent, settlement; quality-control evidence; policy and training refresh | Compliance memo; brand-guideline update; board report |

Two features of that calendar are deliberate. Q2 comes before Q3 because you cannot price a portfolio you have not verified. And Q4 sits after the budget because the board report should describe a funded plan, not a wish.

The audit's output is a decision memo, not a spreadsheet. Three columns: what we found, what it costs to fix, what happens if we do not. A finding with no price and no consequence will not be actioned, and an audit whose findings are not actioned is worse than no audit at all — it is a documented record that the owner knew.

The audit trap nobody sees coming. An internal audit that identifies an over-broad identification, and is then followed by a maintenance declaration swearing to the full identification anyway, converts a survivable accuracy problem into an evidence problem. The finding is in your file. Fix what you find, in the next filing, and paper the fix.

Theme 5 — Prune or Keep: The Economics of Letting Go

Halvorsen's Q3 session started with 31 Tier 4 candidates. Here is the arithmetic that decided them.

A single-class U.S. registration carried through one decade costs roughly $975 to $1,225 in government fees — a Section 8 at $325 per class, an optional Section 15 at $250, and the combined Sections 8 and 9 at $650 — plus two to three professional-fee events at $500 to $900 each. Call it $2,000 to $4,000 per class per decade in the United States alone, before a single office action, audit response, or watch subscription. Multiply by classes, then by countries. A tidy-looking three-class registration in nine markets is a low-six-figure commitment over twenty years, and nobody ever approved it as one.

Against that, four dispositions:

| Disposition | When it fits | What it costs | What you keep | |---|---|---|---| | Maintain in full | Mark in use, identification matches, business defends it | Full cycle cost | Everything | | Narrow | Mark in use on some goods only | Free if deleted inside the declaration; $250/class under 37 C.F.R. § 2.161(c) after submission | A registration that survives an audit | | Monetize | Mark in use but not strategic, or dormant with residual recognition | Negotiation time; an assignment or licence | Cash, and a clean exit from the calendar | | Let lapse | No use, no plan, no defensive value | Nothing further | Only unregistered rights, if any |

The last row is where owners get hurt, because "let it lapse" feels like a null action and is not. A lapse forfeits six specific things, and a manager should be able to name all six before signing off:

  1. The presumption of validity, ownership, and exclusive right that comes with registration. 15 U.S.C. § 1115(a).
  2. Nationwide constructive use priority dating from the application. 15 U.S.C. § 1057(c).
  3. Constructive notice to everyone in the country. 15 U.S.C. § 1072.
  4. The statutory notice predicate for profits and damages — without registration there is no ® to give, and without ® or actual notice the monetary recovery is cut off. 15 U.S.C. § 1111.
  5. Incontestability, permanently, along with the years of continuous use already banked toward it. 15 U.S.C. § 1065.
  6. Recordation with U.S. Customs and Border Protection, which is available only for marks on the Principal Register. 19 C.F.R. pt. 133.

What survives a lapse is common-law rights in the actual trading area, which are real but geographically bounded and expensive to prove. See Where Your Trademark Rights End: Tea Rose-Rectanus, Dawn Donut, and the Geography of Common-Law Priority for exactly how bounded — Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358, 364 (2d Cir. 1959), remains the reason a remote-market registrant may have rights it cannot presently enforce.

So the decision rule for a Tier 4 mark is five questions, and any single "yes" keeps it another cycle:

Halvorsen kept nine and dropped twenty-two, saving about $19,000 over the following decade in fees alone and rather more in the professional time those filings would have consumed. Two of the twenty-two were sold — dormant marks with residual consumer recognition are worth something to somebody, and a mark that is still in use will always command more than one already vulnerable to a non-use cancellation.

Never lapse a registration for a mark you still use. It sounds obvious. It happens constantly, because the pruning list is built from the docket and the docket does not know what the business is selling. Every proposed abandonment gets a written confirmation from a named business owner that the mark is out of the market. No exceptions, no verbal approvals.

Theme 6 — Budget Models That Survive a Cut

There are four ways to buy trademark work, and the right answer is usually a hybrid.

| Model | How it prices | Best for | Failure mode | |---|---|---|---| | Per-matter hourly | Time on each filing | Small, irregular portfolios; disputes | No forecastability; the year the maintenance cohort lands looks like a crisis | | Fixed fee per filing type | A rate card: application, office action response, Section 8, renewal | Steady-state maintenance and prosecution | Prices the routine well and the unusual badly; watch for scope disputes on office actions | | Annual program fee | One number for the whole managed portfolio, disputes carved out | Portfolios over roughly 75 properties with a stable shape | Misaligned incentives if the count grows; renegotiate annually against actual filings | | Hybrid | Program fee for run-the-portfolio, rate card for grow, hourly with an approved reserve for defend | Most mid-market and in-house programs | Requires clean tiering to work at all |

Whichever model you pick, budget in three lines, never one: run (maintenance, docketing, domains, watch), grow (clearance and new filings), and defend (watch triage, demands, TTAB, litigation). One line invites the worst possible reallocation, which is spending the renewal money on a dispute in March and discovering in September that a Section 8 is due.

Government fees under 37 C.F.R. § 2.6, effective 18 January 2025. Confirm current amounts before every filing; the Office adjusts them, and the January 2025 adjustment was substantial.

| Filing | Fee | |---|---| | Application, base electronic filing | $350 per class | | Surcharge, free-form identification of goods/services | $200 per class | | Request for extension of time to file a statement of use | $125 per class | | Statement of use | $150 per class | | Extension of time to respond to an office action | $125 per request | | Petition to revive an abandoned application | $150 | | Section 8 declaration | $325 per class | | Section 15 declaration | $250 per class | | Section 9 renewal | $325 per class | | Grace-period surcharge, Sections 8 and 9 | $200 per class each | | Deleting goods after submission, before acceptance (37 C.F.R. § 2.161(c)) | $250 per class | | Ex parte expungement or reexamination petition | $400 per class | | Notice of appeal to the TTAB | $225 per class | | Notice of opposition or petition to cancel (ESTTA) | $600 per class |

Halvorsen's approved program, built from that table plus a rate card:

| Line | Components | Annual | |---|---|---| | Run | ~15 U.S. maintenance filings at 1.8 classes average; 6 foreign renewals; 340 domains; watch service; docketing platform | $52,000 | | Grow | 8 new U.S. applications at 2 classes; 3 full clearance searches; 2 foreign extensions via Madrid | $34,000 | | Defend | Watch triage; 6–10 demand letters; one opposition reserve | $38,000 | | Total | | $124,000 |

Then finance asked for 22 percent. Here is what came out, in order, and the reasoning is the transferable part:

  1. Tier 4 pruning — 22 registrations dropped, saving $6,400 in the current year and far more later. Cut the asset, not the control.
  2. Watch narrowed by tier — full watch retained on four Tier 1 brands, class-restricted watch on Tier 2, watch dropped entirely on Tier 3 and 4. Saved $5,100.
  3. Foreign filings resequenced — two speculative designations deferred to the following year against an actual distribution agreement. Saved $8,900.
  4. Domain portfolio rationalized — 340 down to 190, keeping every defensive registration for Tier 1 marks and every domain resolving to live content. Saved $2,700.
  5. Untouched: docketing platform, TSDR reconciliation time, maintenance filings, and the dispute reserve.

That last line is the whole discipline. Cutting the control environment saves four figures and risks six. When the cut has to come out of controls, say so in writing and name the registrations at risk, because the point of a control is that somebody senior owns the decision to remove it.

Theme 7 — The Policing Budget: Watching Without Bleeding

A watch service is cheap. What a watch service produces is expensive, and unbudgeted triage is how enforcement lines blow up. The fix is a written triage matrix that converts a hit into an action without a fresh strategy meeting.

| Signal | Default action | Typical cost | Escalate when | |---|---|---|---| | Application for a similar mark, unrelated goods | Log; no action | $0 | Applicant's identification could be amended into your channel | | Application, related goods, Tier 2 mark | Extension of time to oppose; watchful waiting | Extension fees plus an hour | Applicant proceeds to use | | Application, related goods, Tier 1 mark | Demand plus opposition on the calendar | $600/class ESTTA plus counsel | Applicant is funded and committed | | Commercial use, small, non-confusing channel | Educational letter | 1–2 hours | Expansion or refusal to change | | Commercial use, direct competitor | Full pre-litigation workup | Five figures | Confusion evidence exists | | Counterfeit or marketplace listing | Platform takedown; CBP recordation for Tier 1 | Low per item, high per program | Volume or physical channel |

Two strategic cautions belong in the budget conversation. First, delay costs remedies — unreasonable delay undermines a request for preliminary relief and gives the other side a coexistence argument, so the policing calendar is a legal control, not just a housekeeping one. Second, a cheap opposition can be an expensive mistake: a Board decision on likelihood of confusion can carry issue-preclusive effect in later district-court litigation where the usages adjudicated are materially the same. B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015). Losing a $600 opposition badly is not a $600 event.

Theme 8 — Deal-Readiness and Board-Level Reporting

The best test of a portfolio program is how fast it can answer a stranger. When Halvorsen received an unsolicited approach in November, the schedule of marks went out in four business days with a clean chain of title on 141 of 143 registrations. The two exceptions had been on the Q1 exception list since January, with confirmatory assignments already drafted. Nothing about that was luck.

Report to the board on seven metrics, the same seven every time, whether or not there is news.

| Metric | Definition | Why a director cares | Target | |---|---|---|---| | Coverage ratio | Share of revenue attributable to brands protected at Tier 1 standard | Ties legal spend to revenue at risk | ≥95% | | Docket integrity | Live records reconciled against the public register in the last 12 months; statutory deadlines missed | The only true operational-failure metric | 100% / zero | | Identification exposure | Registrations whose identification exceeds proven use | Predicts audit and expungement losses | Trending to zero | | Title clean rate | Registrations whose recorded owner matches the operating entity | Directly priced in every transaction | 100% | | Enforcement conversion | Watch hits triaged, actioned, and resolved without litigation | Shows the program working, not just spending | Report the trend | | Cost per protected brand-market | Total program spend ÷ (Tier 1 and 2 marks × active markets) | Makes efficiency comparable year over year | Report the trend | | Deal-readiness | Business days to produce a verified schedule of marks | The metric that predicts every other one | ≤5 days |

Report the four things a board should never be given, too. Registration count is a vanity metric that rewards exactly the behaviour you are trying to stop. Letters sent creates an incentive to send letters. "No issues this quarter" is a report that the audit did not happen. And a legal budget presented as one number invites a proportional cut across controls and assets alike.

One accounting note earns its place in the board conversation. Under ASC 350, an acquired trademark with an indefinite useful life is not amortized but is tested for impairment at least annually, while internally developed marks are generally expensed as incurred rather than capitalized. The practical consequence is that the balance sheet is not an inventory of the brands. A company can carry a nine-figure acquired brand and nothing at all for the house mark that generates most of its revenue. When a director asks what the portfolio is worth, that gap is the honest answer, and the coverage ratio is the metric that fills it.

A Suggested Reading Path

Pick the branch that matches your situation.

Branch A — You inherited a portfolio and there is no real docket.

  1. Building and Managing a Trademark Portfolio for orientation, then Trademark Portfolio Inventory — Template to start the list.
  2. Build it the way a buyer would: Phases 2, 3, 5, and 6 of the Trademark Due Diligence Checklist.
  3. Docketing Deadlines and Trademark Renewal Deadlines Explained, then build the three docket layers in Theme 3.
  4. Institutionalize with the Annual Trademark Portfolio Review Checklist on the quarterly cadence.

Branch B — The annual review is due in thirty days.

  1. Annual Trademark Portfolio Review Checklist as the agenda.
  2. Use and specimens: Use It or Lose It and Specimen Refusals.
  3. Identifications: Goods and Services Identification Checklist.
  4. Sworn filings: Trademark Fraud Claim and Self-Audit Checklist.
  5. Licences: Trademark License Quality Control Checklist.

Branch C — You have been told to cut the budget.

  1. Tier first, using Theme 2. Nothing else is decidable until the tiers exist.
  2. Prune with Theme 5's five questions, checking Proving and Defeating Trademark Abandonment Stage 9 before you rely on excusable non-use anywhere.
  3. Resequence foreign spend with Designating Countries Under the Madrid System.
  4. Monetize what you can: Assignments vs. Licenses, Trademark Assignment Agreement — Template, Trademark Assignment Recordal Checklist.

Branch D — The board asked what the brands are worth.

  1. Theme 8's seven metrics, and be honest about the ASC 350 gap.
  2. Run the buyer's questions on yourself: Trademark Due Diligence in Mergers and Acquisitions.
  3. Title first, everything else second: Trademarks in the Deal.

Branch E — You are a solo or small firm running many small portfolios. Read The Solo and Small Firm IP Practice Toolkit for the workflow economics, then adopt Theme 3's three docket layers unchanged — they scale down better than they scale up — and price on the fixed-fee-per-filing-type model in Theme 6.

Branch F — The company is very young. Startup and Founder Brand Toolkit: The First Two Years of Trademark Decisions first, then this toolkit's Themes 1 and 3 only. Tiering and board reporting can wait; an inventory and a docket cannot.

Primary Authorities

| Authority | Rule or holding | |---|---| | 15 U.S.C. § 1051(b), (d) | Intent-to-use filing basis; statement of use and extension ladder to a 36-month outer limit | | 15 U.S.C. § 1055 | Use by a controlled related company inures to the benefit of the owner | | 15 U.S.C. § 1057(c) | Filing date becomes nationwide constructive-use priority upon registration | | 15 U.S.C. § 1058 | Section 8 declaration of continued use required in years 5–6 and each 10-year period; failure cancels | | 15 U.S.C. § 1059 | Section 9 renewal every ten years, six-month grace period with surcharge | | 15 U.S.C. § 1060(a) | A mark may be assigned only with the goodwill; ITU applications may not be assigned before an allegation of use except to a successor to the business; three-month recordation window against a bona fide purchaser | | 15 U.S.C. § 1064; §§ 1066a, 1066b | Cancellation grounds; TMA ex parte expungement and reexamination, $400 per class | | 15 U.S.C. § 1065; § 1115(a)–(b) | Incontestability and its conditions; presumptions attaching to registration and the nine defenses to an incontestable registration | | 15 U.S.C. § 1072 | Registration is constructive notice of the registrant's claim of ownership | | 15 U.S.C. § 1111 | Without ® or actual notice, profits and damages are unavailable for the period of non-notice | | 15 U.S.C. § 1127 | "Use in commerce" means bona fide use in the ordinary course of trade; three consecutive years of non-use is prima facie abandonment | | 15 U.S.C. § 1141k | Section 71 affidavit maintains a U.S. registration issued from a § 66(a) extension of protection | | 37 C.F.R. § 2.6 | Trademark fee schedule, adjusted 18 January 2025 | | 37 C.F.R. § 2.18; TMEP § 609 | Correspondence address of record and with whom the Office corresponds | | 37 C.F.R. § 2.161(b), (c) | Post-registration proof-of-use audit; $250 per class to delete goods after submission and before acceptance | | 37 C.F.R. § 2.164 | Deficiency surcharge cures a timely but defective maintenance filing | | 37 C.F.R. §§ 2.88, 2.89 | Statement of use and extension request practice, including minimum filing requirements | | 19 C.F.R. pt. 133 | CBP recordation is available for marks on the Principal Register | | TMEP §§ 1604, 1605, 1606, 1613 | Office practice for Sections 8, 15, 9, and 71 | | ABA Model Rules of Prof'l Conduct r. 1.3, 1.4 | Diligence and communication; a docket failure is usually both | | B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015) | A TTAB likelihood-of-confusion decision may have preclusive effect where the usages adjudicated are materially the same | | Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212, 218 (2020) | Willfulness is not an inflexible precondition to an award of the infringer's profits | | Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 1581 (Fed. Cir. 1990) | Advertising and ancillary goods do not preserve a mark; a business decision to withdraw a product is not excusable non-use | | Barcamerica Int'l USA Trust v. Tyfield Importers, Inc., 289 F.3d 589, 595-98 (9th Cir. 2002) | Licensing without inspection or standards forfeits the mark | | M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1376 (Fed. Cir. 2015) | Bona fide intent to use is an objective, documentary standard | | Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358, 364 (2d Cir. 1959) | No injunction where the registrant does not presently operate in the defendant's remote market | | In re Bose Corp., 580 F.3d 1240, 1245 (Fed. Cir. 2009) | Fraud on the USPTO requires subjective intent to deceive, proved by clear and convincing evidence | | Clorox Co. v. Chemical Bank, 40 U.S.P.Q.2d 1098 (T.T.A.B. 1996) | An intent-to-use application assigned in violation of § 1060(a)(1) is void |

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Across the Wider Corpus

The Marksy library now extends well beyond the register. These sit outside this document's immediate subject and bear on it directly — sector-specific brand practice, the adjacent federal regimes, and the disputes a trademark question runs into once it leaves the USPTO.

This document is general information about the law, not legal advice, and does not create an attorney-client relationship. Trademark and copyright outcomes turn on specific facts. Marksy is not a law firm.

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