How To Lose Your Trademark In 4 Easy Steps

Creating a trademark is actually quite easy. Pick a name, a word, a number, a design - or a combination of those things, start using it on the sale of an item or a service, and voila you have your very own trademark. Registration - while extremely adviseable - does not mark the beginning of the life of the mark. A mark comes into being when it is used on the goods or services that are sold. It is literally that simple.

It is also easy to lose your trademark rights - even if you have gone through the expense and time of getting a registration, or litigating the mark. Like grass that gets overgrown without being cut, trademarks that languish without being used will fall into disrepair and inevitably, die.


So, here are the top 4 ways to lose your trademark:

1) Stop using it. It stands to reason that if use gives a mark its life, then failing to use the mark takes that life away. Unlike copyrights that are valid for a fixed period of time regardless of use, trademarks that are not used are considered abandoned - even if there is a valid registration. There is nothing to prevent a competitor who wants to get its hands on your mark from filing a cancellation of your registration based upon abandonment. It is then up to you to prove otherwise.

2) Don't File the Forms: this is more toward the registration of the mark, but a registration is critically important in allowing you to enforce your rights in your mark. So, you can easily kill your registration by failing to file the Section 8 use affidavit at the correct times. For marks that have just been registered, this is between the 5th and 6th year of registration and again at the first renewal. For those marks that have already been renewed, the Section 8 affidavit must be filed upon each successive renewal.

3) Let Others Use It Without Policing: Depending upon how wide-spread your use is, this may or may not be a big issue. For those who regularly license their marks to other for use on goods or services, it is critical to police those licensees to ensure that they are meeting quality control standards such that the product or service that bears your mark lives up to the reputation that you have built. Failure to do this will lead to a weakening of even the strongest marks and will open the door for competitors to come in and declare it abandoned.

4) Don't Go After Infringers: This is a tie-in with No. 3. Part of the obligation of a mark owner to police its mark is to go after those who infringe. Wilfull infringers - or those who pick a mark based upon your success - need to be shut down as soon as possible to prevent the taint of their (usually) inferior use on the strength and goodwill of your mark. This is why handbag manufacturers are so eager to go after counterfeiters.

The key to maintaining your mark - and your registration if you get one - is to use it and to pay attention to how others use it, going after those who infringe.

If you put all of those resources into building a brand, why throw it away?
image: brentdanley (through Creative Commons, some rights reserved)
All text © 2008, Hardy, Carey, Chautin & Balkin, LLP. All Rights Reserved.