You can lose trademark rights once you’ve obtained them in a number of different ways. Nearly all of these ways involve your failure as a trademark owner, or registrant, to maintain, renew, or enforce your trademark registration.
Trademark registration is unlike copyright registration, for example, in this way. Unlike copyright registration, a trademark registration will last an infinite amount of time, hypothetically. Copyright registration lasts only for a fixed period of time before a copyright slides into the public domain.
However, this “immortal” trademark life-span comes with strings attached. Namely, you only retain the right to the trademark registration so long as it is continually in use in interstate commerce in the United States.
That is, you must continue to use your trademark in association with the specific products or services described on your trademark registration certificate.
But there are other ways in which you can lose trademark rights.
This Article will discuss you’re the ways you can lose trademark rights after registration. It will also, thereby, discuss your responsibilities as a trademark owner.
With great power comes great responsibility, as Stan Lee said.
Failure to Renew & Non-Use of the Trademark
As noted, the first way you can lose trademark rights is by ceasing to use the trademark. It’s worth repeating here that a trademark is, naturally, a “mark” used “in trade.” That is, it is a business name, product, slogan, or logo used commercially. Specifically, it is used to identify your company as the source of a specific product or service to American consumers.
A trademark is a “source-identifier.”
If you are not using it in this capacity, it’s just … a mark. And you’ll lose your registration with the US Patent and Trademark Office (USPTO).
If you fail to use your name or logo in commerce, you are no longer entitled to the exclusive use of that name or logo. Another business who will use it as a trademark is, under US law, entitled to do so at that point.
Does this happen automatically?
No. Once you have registered a trademark, you must file Statements of Use at required intervals. This Statement of Use alleges under penalty of perjury that you are still using your name or logo in US commerce. You must attached a “Specimen” to the Statement of Use proving it, moreover. The USPTO will not simply take your word for it.
Your first Statement of Use must be filed between the 5th and 6th years following your initial registration. After that, you must file new Statements every 10 years.
If your use in commerce appears to be dubious, the USPTO will file an Office Action refusing it, endangering your continued registration.
Abandonment of the Trademark
You can also lose trademark rights by abandoning the trademark. Abandonment of a trademark can happen accidentally or purposefully.
Purposeful abandonment occurs when you stop using a trademark and affirmatively file an Express Abandonment notice with the USPTO. When you file this document, the USPTO will list your trademark registration as “Abandoned” and “Dead” on the USPTO Register.
This is the “right” thing to do, for example, when your business fails or when you revise or update a logo that has been registered as a trademark.
A trademark can be “accidentally” abandoned through failure to enforce it. That is, if you allow infringement to occur without taking action, courts will presume that you’ve abandoned it.
Failure to issue cease and desist letters, file take-down notices, or sue infringers in Federal or Michigan start courts can provide a basis for a finding that you’ve abandoned your trademark claim.
This would come out in litigation, generally. The infringer that you eventually get around to suing will raise abandonment as a defense to your infringement complaint. Under the wrong circumstances, for you, the court will agree.
Trademark Genericide
Trademark “genericide” is also a potential result of failing to enforce your trademark registration.
Genericide occurs when third-party, infringing use of your trademark is so widespread that it becomes the “common name” used by the public for your particular product. When this occurs, you lose all rights to enforce your trademark.
Did you know that the word “escalator” was once a registered trademark? It was. But it isn’t any longer. It was genericized.
Your trademark registration can also fall prey to this phenomenon. It is every brand owner’s ambition to have their product’s name on the tips of every tongue in America. But that level of popularity also comes with, yes, great responsibility.
The responsibility, that is, to ensure that the consuming public continues to identify your business or product name as a mark that identifies your company as your product’s source. And not just the name of the product itself.
Improper Trademark Licensing
This is a danger inherent in franchised business, in particular. But it is possible to license any trademark to a third party for that party’s use.
Generally, you can register a trademark only if you use it in interstate commerce. However, you can license a trademark to others.
A trademark license agreement is a contract that allows a third party the use of a registered trademark with a variety of restrictions. Or, rather, it should allow a registered trademark’s use with a variety of restrictions. When the licensing agreement does not provide for, in particular, a certain level of product quality control over the goods or services with which the trademark is associated, the strength of the trademark can weaken.
If you license your trademark and then fail to enforce the terms of that licensing agreement, this failure can been viewed by a court as implied permission to use the name or logo in an unrestricted manner.
A franchise, in particular, is essentially a trademark licensing agreement at its core. As a franchisee, you sign an agreement to operate a business under the trademark(s) owned by the franchisor. You agree to a number of requirements for the presumed return received on the customer goodwill associated with those trademarks, not least of which will be, usually, to maintain X level of quality control.
A properly drafted franchise agreement will provide a mechanism for the revocation of the third party trademark use (and the franchise itself) for any failure to maintain that level of quality control.
This is to avoid the franchisor’s loss of rights in the trademark itself.
However, it is a concern of any trademark licensor. And a good reason to retain the services of an experienced Michigan trademark attorney to review and draft a trademark licensing agreement.
Trademark Infringement
You can, obviously, therefore, lose trademark rights as a consequence of prolonged or widespread infringement. This fact has been touched on repeatedly in this Article.
However, it’s worth setting it out under its own sub-heading here for those who love to scroll without reading.
So we’ll say it again: If you don’t enforce your trademark, you can lose your trademark rights.
Stop complaining, then, about big corporations acting like bullies and sending cease and desist letters to mom & pop shops. This is, in fact, what US law says that all trademark owners must do in order to avoid trademark abandonment.
Don’t Lose Trademark Rights: Work With a Michigan Trademark Attorney
If you are, yourself, a mom & pop-sized operation, this does not mean that you need to spend Big Corporation Dollars to enforce your mark. But it does mean that you can’t ignore the obligations that come with trademark registration.
Sticking your head in the sand, ignoring infringement, and failing to monitor for infringement in the first place are good ways to lose trademark rights.
If you own registered trademarks and would like to discuss your trademark renewal, contact us now to schedule your initial consultation.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting craft brewers, vintners, distillers, and others in all industries with trademark registration, trademark renewal, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.