An owner of a trademark must be diligent in protecting that trademark in order to claim ownership of the mark and pursue future infringement suits. There are several instances in which rights to the mark can be lost through action or inaction. The most common reasons for an owner’s trademark loss include: abandonment, improper use, failure to police and loss of distinctiveness.
Abandonment. A trademark is considered abandoned when the owner of the mark ceases to use the mark to identify its goods and services and demonstrates no intention of resuming use of the mark. According to U.S. trademark law, when an entity stops using the mark for three consecutive years, a rebuttable presumption of abandonment is implied. The cessation of use is generally interpreted as an “intent not to resume use.” In the U.S., a company may stop using the mark in connection with particular goods and services (in which case it is deemed to be abandoned), but continue to apply it to other goods and services offered by the company.
Improper use. In addition to failure to use the mark, a company’s improper use of that mark could hinder the right to trademark ownership. Essentially, the trademark must be employed in such a way as to fulfill its objective: to identify the source of the goods and services its manufacturer produces. If a mark is utilized in a manner that precludes it from serving as a signifier for a certain good or service, then it is at risk of being deemed invalid. Thus, the appearance of the trademark should follow certain specifications including isolating it from the surrounding text and using it as an adjective to describe the goods.
Failure to police. A company that fails to properly monitor third party uses may jeopardize the uniqueness of its mark by allowing other entities to introduce a substantially similar mark into the public arena. In order to prevent loss of a trademark through the presence of comparable marks, a trademark owner should avail itself of the legal means available (such as demand letters and litigation) for proper monitoring practices.
Loss of distinctiveness in the public. Otherwise known as genericide, this occurs when a court has determined that a mark has sufficiently lost its distinctive nature and is thereby generally known in the public as relating to a specific category rather than identifying a particular source or brand. Well known instances of trademarks that have been nullified based on genericide include aspirin and escalator.
The experienced team of attorneys at Connors & Associates provides its clients with knowledgeable and up-to-date legal advice in all areas of intellectual property law. Contact John Connors and his associates at (949) 833-3622 or visit Connors & Associates online to learn more about our services or to schedule a consultation.