Zachary Hiller Law Losing A Trademark

Man holding a trademark symbol. Losing a trademark Zach Hiller Blog

Last week we discussed Twitter and Trademarks, and the need to register names, phrases and symbols for your brand. We mentioned that Twitter was in the process of registering several words, ancillary to the brand. Registering allows them to control the use of these word in commercial settings. Simply registering a trademark isn’t enough. If you aren’t careful you could find your brand losing your trademark protection, opening it up to general use. So how do you prevent losing a trademark? We can explain.

Losing A Trademark

Most people want to see their companies become a success. They want their brand to dominate in the marketplace and have the monetary success that goes along with it. Who wouldn’t want to be the market leader? There is one major issue with becoming a brand juggernaut, and that is that trademarks can become generalized.  Think about it, what do you call the small plastic bandage you put on a cut? Most people call it a band aid, regardless of the actual name of the brand being used. The same can be said for Kleenex, Xerox or Thermos. These are all terms that are used to describe a range of products in general, regardless of the name brand in question.

It would seem that having such recognition in the marketplace would be a good thing, but in terms of intellectual property law this type of dominance can have a negative impact on the trademark. If a word becomes too common, for example, then it is no longer eligible for trademark registration. In fact, a brand has to much more than simply register a mark in order to keep hold of it.

Brands can lose a trademark due to “non-intentional acts on the mark,” or uncontrolled licensing. When brands allow their trademark to be used haphazardly, without any control over the nature and quality of the goods. Remember that a trademark serves to ensure the public against any confusion in the marketplace. It carries with it the implicit promise that the owner of the trademark is ensuring that those who license the mark maintain a certain quality.

Brands can also lose their trademark for failing to enforce their ownership on the mark, by allowing other products or services using the same or similar marks. Different companies may have similar names, Dove Chocolate and Dove Soap for example; but because it is unlikely for anyone to confuse the two in the marketplace these trademarks don’t infringe on each other. Other brands thrive on such confusion. Think about the countless counterfeit handbags and purses that intentionally try to trick consumers into thinking they are the real McCoy. In order to maintain their trademark, luxury brands must go after these counterfeiters lest they appear to abandon their mark.

Finally, there is the generic side of a trademark, as we mentioned before. This references the term for any mark that has gained such prevalence that is is used as a generic reference for a product and it can lead to the loss of a trademark. Once the name has become generic, third parties can sue for the cancellation of the mark. All of these instances represent outside parties effect on a trademark. Companies have an obligation to prove continued use of the mark. After the mark is registered owners, between the fifth and sixth year the owner must submit proof of continued use. The institution of trademark itself is based on the use of marks, not just sitting on the marks after registration. Non-use of a trademark for three years may constitute the abandonment of said mark. Companies must also maintain excellent records to ensure that this doesn’t happen.

As you can see, registering for a trademark is only the beginning. Even if you have a registered mark you may find need of an attorney to ensure the mark stays valid.  If you have questions about any aspect of trademark law contact the experts at Zachary Hiller Law today.

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