For many businesses, trademarks are their most valuable intellectual property assets. And it’s easy to see why; trademarks identify your brand to consumers and distinguish it from those of others. If you have created a valuable product that is wildly successful in the marketplace — even in the absence of patent protection — your trademark will be similarly valuable. But because trademarks arise and remain in force through use, it is possible to inadvertently lose your trademark rights if you are not careful. An Alabama trademark lawyer explains how below.
Trademark rights exist only so long as the trademark is actively being used in commerce in connection with the goods or services it concerns. This is one reason why the United States Patent and Trademark Office (USPTO) requires owners of federally registered marks to submit a Declaration of Use between the fifth and sixth years after registration. As such, non-use for three consecutive years is considered abandonment (absent certain extenuating circumstances), and you will lose your registration. And while the USPTO does not necessarily keep tabs on whether you are using your trademark, be assured that your competitors are, and may petition for your registration to be revoked.
Trademark owners have the right to license their marks to others in exchange for a royalty. One of the most common reasons for doing so is that another, larger entity may have better capacity to manufacture and sell the trademarked goods than the trademark owner. However, if you grant a license, you must monitor your licensee’s actions to ensure that the licensee is meeting the appropriate quality control standards for your product. If your failure to monitor leads to a deterioration of quality standards, you may be deemed to have granted a “naked license” and lose your trademark rights.
Trademark owners are required to exert reasonable efforts to police infringement and enforce their marks against infringers. If you are aware of infringing activity occurring and fail to take action to stop it, you may be deemed to have abandoned your mark. Of course, you are not required to aggressively pursue each and every instance of perceived infringement, but you should at least make reasonable efforts to monitor potential infringement and make the alleged infringers aware of your mark (such as through a cease and desist letter).
Generic terms (such as “computer,” “chair,” “phone,” etc.) cannot function as trademarks because they are incapable of identifying a particular brand. Trademark genericization occurs when a trademark that once identified a particular brand becomes so commonplace in casual use that the trademark name becomes the standard term for all similar items (e.g., “Aspirin” “Escalator,” “Linoleum”). If you are lucky enough to own a famous trademark, be vigilant about preventing genericization.
Contact an Alabama Trademark Lawyer if You Are Concerned about Losing Your Trademark Rights
These are just a few ways to lose trademark rights. For more information about keeping your trademarks in force, please contact an Alabama trademark lawyer at AdamsIP by calling 251-289-9787 or by using our online contact form.