The battle to protect your trademark does not end with federal trademark registration. Once registered, you have to be vigilant about protecting the trademark from misuse, or risk losing the trademark’s protected status. The better the brand name, the easier it will be to protect it from improper use by others.
Protection begins with your own use of the mark. In order to maintain a federal registration, you have to actually use your mark in commerce; you cannot simply register it and keep it for possible future use. If you don’t use it, a third party (e.g. a competitor that thinks you came up with a great brand name and wants to use it for their own products) can seek to cancel your registration for non-use and then register it as their own brand name. It is important that you not only continue to use your trademark, but that you use it properly. I will discuss proper trademark use in a later post.
Additionally, certain documents must be filed periodically with the Patent and Trademark Office (the “USPTO”) to maintain a trademark registration. These documents essentially provide a mechanism of proof to the USPTO that you have been continuing to use the trademark in interstate commerce. If the deadline for filing a maintenance document passes, you will lose your registration. If you buy or sell a trademark (e.g. pursuant to the sale of a business or an inter-company agreement between related companies) or grant or take a security interest in a trademark or change the name or address of your company, you should update the ownership records with the USPTO. It is important to keep the trademark registration’s contact information up to date with the USPTO. However, the USPTO will not send you reminders about filing deadlines, so it is incumbent on the trademark owner to keep track of filing deadlines.
It is also important that you prohibit others from using your trademark improperly and without your consent. You should actively pursue any third parties who infringe your trademarks. Sometimes you will find out about an infringement in an ordinary Google search or because one of your customers tells you that they found a competitor’s website when they were looking for yours. There are also trademark watchdog services that will send you notices about potentially infringing marks. If you have a valuable trademark that is frequently infringed, a watchdog service may be a worthwhile investment.
If you are lucky enough to have a brand name that becomes extremely well-known, it may be eligible for status as a “famous” mark. Famous marks come with their own set of privileges as well as challenges. While afforded certain special protections against infringement, famous marks are sometimes vulnerable to becoming generic (and losing their registered status) through unchecked misuse. Examples of once-famous trademarks that lost their trademark registrations are aspirin, cellophane, thermos, escalator, zipper, and yo-yo. All of these once-famous trademarks are now generic names used to describe the product. Most of these were lost as a result of under-policing the misuse of the name by third parties and probably by the owners (and their employees) themselves. But while under-policing can lead to loss of the registration, over-policing can be costly too in terms of legal fees, watchdog service fees, and public image. Finding the right balance is important to ensure long-lasting protection while keeping costs to a minimum.