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How to Ensure You Do Not Lose Your Trademark Rights

By John DiGiacomo

Many believe that once a trademark is established and properly registered, the legal protections provided by US trademark law will last indefinitely. However, this is a mistaken belief since there are several ways in which trademark rights can be lost. Here is what you should know and how to ensure that you do not lose your trademark rights.

Four common ways that trademark rights can be lost

The essence of a trademark is its use in commerce so that consumers associate the trademark with a unique product or service. As such, the first way in which trademark rights can be lost is through unexcused non-use. Generally, this is called trademark abandonment. Under the Lanham Act, a trademark will be considered abandoned if the trademark is not used in commerce for three consecutive years and it is shown that there is no intent to resume use. To avoid losing your trademark on this basis, make sure the trademark is being used (and used as it is registered, not as a variation).

Another method of losing trademark rights is failure to renew its registration. Trademarks are registered with the US Patent and Trademark Office (“USPTO”). But registration must be renewed between the fifth and sixth years after the initial registration, then must be renewed again at the 10-year mark and every 10 years thereafter. Failure to renew your trademark registration will result in cancellation of the registration. If the trademark is still being used, the trademark might still have common law trademark protection. But it is risky to rely on the common law. To avoid losing your trademark on this basis, make sure you file with the USPTO for renewal as required.

Another method of losing a trademark is by failing to monitor the marketplace for infringing uses causing your trademark to either lose its distinctiveness or become a generic word for a type of product or service (rather than a mark identified with a specific product/manufacturer). The word “Zipper” is a famous example of a former trademark that came to be used so commonly by consumers that the word lost its status as a trademark. This fate can be avoided by policing use of the trademark in the marketplace. As one example, demand letters should be sent to print and online media if use of the trademark does not include the circle-R designation or does not otherwise indicate that the word/phrase is trademarked.

A fourth method of losing trademark rights is by improper licensing or failing to supervise trademark licensees. If a trademark is licensed, there must be adequate supervision over its use. Essentially, loss of trademark rights occurs because uncontrolled use of a trademark by a licensee can dilute the trademark to such an extent that it no longer functions as a trademark. For example, if a licensee uses the trademark on every product or service that they provide, then the trademark loses its association with the original product/service. To avoid this, you must have solid and enforceable written license agreements. Further, you must be prepared to litigate if a licensee violates the license agreement. Further, you must avoid any sort of implied or permissive license. Improper use by an implied licensee can damage a trademark just as much as improper use by a formal licensee.

If you have questions about creating and registering a trademark or litigating a trademark dispute, contact the trademark lawyers at Revision Legal at 231-714-0100.

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