Most business owners find it comforting to know that trademarks can last forever if they are used and protected correctly. Still, in order to ensure the duration of your trademark, it is essential you understand, and avoid, the various ways you could potentially lose trademark protection.
When a Trademark Becomes Generic
If a trademark becomes generic, you could lose trademark protection. How might a trademark become generic? Strange as it might seem, it is often due to improper use by the trademark owner. In the past, many trademark owners have participated, albeit unknowingly, in the destruction of their own trademark’s distinctiveness, giving birth to the term, “genericide”.
How can you avoid committing genericide? Keep in mind the following tips to protect your brand’s distinctiveness and, ultimately, your trademark duration:
Always use the generic name for your product along with the specific brand name. For example, when marketing a product, saying, “I love my APPLE computer” is preferable to saying, “I love my APPLE”.
Always use your trademark as an adjective. Never use your trademark as a verb or noun, which could constitute improper trademark use.
Always be sure the trademark stands out from any surrounding text when it appears in writing.
Always use a trademark notice, Ⓡ or TM, to indicate the significance of your trademark.
When a Trademark is Abandoned
Trademark protection can also be lost when a trademark is abandoned. What constitutes abandonment? In the U.S., a trademark is deemed abandoned when, during a period of three consecutive years, the trademark owner ceases to use the trademark and demonstrates no intent to resume use of said trademark in the future. The solution? If you want to keep your trademark rights, use your trademark continuously.
When a Trademark Goes Undefended
If you know that other people are using the mark and you don’t take appropriate action to stop them promptly, you can lose the ability to ever stop them. Undefended marks can be deemed abandoned by the USPTO and the mark holder can be subsequently stripped of their rights.
What steps do you need to take to defend your trademark? The first is to be alert to the possibility of infringement. If you become aware of acts of infringement, there are typically two steps you must take as a mark owner. The first involves sending a cease and desist letter to the infringer and, if that doesn’t work, the second step is filing a lawsuit. This process is delicate and it is best to enlist the help of a qualified trademark attorney. An attorney can help you decide if the infringement is real. They can also help you to avoid a lawsuit by properly drafting a cease and desist letter, which require both proper wording and tone to get the desired results.
If need help making sure your trademark lasts forever, feel free to contact me anytime.
Kelly G. Swartz is a patent attorney licensed to practice in front of the United States Patent and Trademark Office and in the state of Florida. She limits her practice to intellectual property law including patent, trademark, copyright, and trade secrets.