What happens after you register a trademark?
The application gets approved, the registration certificate gets filed in a drawer somewhere, and everyone goes back to work.
The in-house counsel who worked hard managing the application will quickly move on to other tasks. As the saying goes: “Out of sight, out of mind.”
The inconvenient truth is that trademark ownership isn’t like home ownership — it’s a lot more like renting.
You, the trademark holder, have agreed to care for your mark in exchange for exclusive rights. Fail to manage that mark properly, and you risk forfeiting those rights.
But what exactly does caring for a trademark look like?
In this article, we’ll reveal six possible ways your company could lose trademark rights and how to reduce the likelihood of that happening.
Six Possible Ways to Lose Your Trademark Rights
Though there are always exceptions, it’s important to remember that 99% of trademark maintenance is completely within your control. You just need a high level of organization and a strong defensive strategy to stay on top of things.
Generally speaking, the ways your company might lose a mark can be divided into two categories:
- Non-intentional acts of the owner
- Non-use of the marks
But, the following six points will explore these two categories in more detail.
1. Failure to Renew and Manage Portfolios
First, the most obvious culprit: not noticing when marks are up for renewal.
Once your mark is filed with the U.S. Patent and Trademark Office’s (USPTO) Principal Register, your certificate of registration is valid for an initial term of ten years.
After that, it is the responsibility of the owner to file for renewal every subsequent ten years. Since most large corporations and firms use docketing systems to prevent overlooked deadlines, such carelessness is usually avoided.
With that said, checking on a trademark once every ten years is a huge mistake.
Obviously, a lot can change within a decade: new businesses pop-up, new products are born, and new applications are filed. Unfortunately, many companies neglect to monitor marks outside of their “Crown Jewel trademarks,” assuming they can’t afford to monitor more than that.
But this creates a Catch-22 for trademark holders, which leads us to our next point.
2. Your Mark Loses Distinctiveness
Since trademarks are issued to preserve distinctiveness, anything diluting the meaning of a mark can be grounds for cancellation. Not only do such instances result in lost rights, but they may also require businesses to either undergo expensive rebranding campaigns or forgo a particular product or service entirely.
Back to that Catch-22: how can a large corporation monitor every mark without breaking the bank?
Naturally, we’re a little biased, but we recommend our own Trademark Watching solution and service, which allow companies to exceed fiduciary responsibility with prioritized watch reports that eliminate irrelevant results. For one flat fee, and a few minutes a day, you can watch your entire portfolio.
3. Your Mark Becomes Generic
Escalator. Trampoline. Aspirin.
What do these brands have in common? They were all once officially owned trademarks, and they are all now everyday words. Sometimes brand names become so popular they take on lives of their own. Once a trademark has reached generic status, the loss of distinctiveness means a loss in trademark protection.
The irony, of course, is that these businesses worked really hard to achieve high levels of recognition — only to have their trademark protection fall away. This is the one item on our list that isn’t completely within your control. But, considering the many ways rights can be lost, this is certainly the most desirable of these scenarios.
4. You Lose In Litigation
This one is straightforward — fail to do your homework, and risk getting sued. Companies can reduce their risk of trademark infringement by conducting thorough trademark search clearance processes before application.
Unfortunately, marks sometimes get approved that later end up in court.
While the USPTO will do its best to ensure your mark isn’t too similar to anyone else’s, they aren’t perfect. Most of the time, when large corporations find themselves in hot water, it’s because they overlooked “a little guy.”
You can reduce the likelihood of that happening by conducting comprehensive trademark search clearance processes — combining intelligent, innovative technology with the trusted expertise of our trademark searching Expert Analysts.
5. Five-Year Dependency Violations
Maintaining a mark’s international rights, as granted by the World Intellectual Property Organization (WIPO), involves a little extra attention. Should a mark lose distinctiveness at home during the first five years of registration, international registration is forfeited by default.
Your Madrid Protocol rights are contingent upon maintaining U.S. brand integrity within those first five years.
In other words, lose your mark at home, lose it everywhere else.
While a company could technically avoid such a scenario by individually applying to each country of interest, doing so is more costly, time-consuming, and adds to administration workflows.
6. Incorrect Use Violation
Finally, trademark institutions were designed to be practical. That means “If you don’t use it, you lose it!”
Since trademark ownership is contingent upon active use, owners must submit proof of continued use to the USPTO between years five and six after registering.
Non-use of a trademark for three consecutive years is considered abandonment unless proven otherwise. Additionally, companies must be able to prove they are using the mark as originally intended. Obviously, this is more important in the U.S. (where intent of use is required during registration) than in the E.U.
While the government won’t likely be looking over your shoulder, another business might! Should someone else conclude your mark isn’t being used as filed, they can apply to have your mark revoked. As such, maintaining relevant records of use is paramount.
Maintaining Your Trademark Rights
As you can see, there are many different ways to lose trademark rights.
Though it may seem obvious, it’s worth emphasizing: Trademark offices are not monitoring online or offline markets for unauthorized use on your behalf. Maintaining the integrity of your mark, and preventing others from infringing, upon it is the responsibility of the trademark owner.
As previously mentioned, keeping tabs on all your company’s marks can be tough. Especially, if you own hundreds of them! Which is why we offer a comprehensive Trademark Watching solution and service — Corsearch is the only technology-assisted software as a service company that allows companies to monitor their entire trademark portfolios at one affordable price.
Whether you want to watch just one mark, or all marks in your trademark portofolio, Corsearch has the perfect solution just for you!