“Getting a trademark registration certificate takes months; losing it does not.” So, How to avoid loss of Trademark? Let us see
What? Is it possible to lose a trademark even after its registration? Yes, it is very much possible even after you have a trademark registration certificate by USPTO. While the trademark registration certificate indeed provides you the trademark rights and authority on your mark, you must know various causes why people end up losing their trademark rights.
After months of hard work and time investment, USPTO has finally granted you the desired trademark. You invested your sweat and blood along with your hard-earned money to pay the trademark attorney fees USPTO registration fees. And you finally have the fruit of your hard work. Your happiness has no end; your company will finally have its trademarked name and business logo. Sounds exciting, right? But wait, how to avoid loss of trademark?
Can Trademark Rights be Lost?
Yes, if you don’t carry out proper trademark monitoring or policing, you are quite prone to losing your trademark rights. Even if your trademark is accepted, individuals can challenge and steal your trademark via legal procedures; thus, getting your mark registered is only the first stage in a protracted struggle.
The trademark registration certificate you obtain from USPTO or other national offices that approve your proposed trademark is only the first stage in your trademark ownership voyage. In such situations, the uncomfortable reality is that acquiring a trademark is more like renting than owning a home. As a result, even after a trademark office accords you full trademark rights, you should do all possible to protect those rights.
How Can Trademarks Be Lost?
Here are 4 ways you can lose your trademarks:
- Failed or uncontrolled trademark assignment/transfer/licensing
- A trademark becomes generic in its field
- Failure to Renew the Trademark After Expiry
Let us understand these causes one by one
Abandonment of trademark
Different countries’ trademark laws grant IP rights on a registration basis and on the use of trademarks and timely renewal. The same is true for the United States’ Lanham Act and India’s Trademarks Act 1999.
Simply put, if you do not utilize your trademark for a certain amount of time, you are deemed to have abandoned it.
Abandonment of Trademark in India
Trademarks Act, 1999: In India, The Trademarks Act of 1999, Section 47, lays out the criteria for removing a trademark from the registration. As per section 47(1) (b), if you fail to use your mark for a period of 5 years post-registration, it results in you abandoning the mark, which also becomes the reason for removing your trademark from the Trademark register.
Abandonment of Trademark in the USA
Under Lanham Act, if you don’t use a mark for 3 years in a row and have no plans to use it again, it’s termed abandoned.
Thus, while USA trademark law provides only 3 years for the owner, the time limit is 5 years in India to qualify as an abandonment of mark.
Failed or uncontrolled trademark assignment/transfer/licensing
What happens if you transfer your trademark incorrectly?
In the majority of cases, you will end up losing your trademark rights. That’s because if you license or permit third parties to use the mark but fail to effectively supervise the standard of the goods or services offered under the business name or logo, which essentially means you’ve assigned the trademark blindly, you’ll lose your rights.
Assume you own the footwear brand “Frontrunner,” which you produce and sell. Now you plan to grow your business by licensing it to a 3rd party. This party will import footwear at lower prices and label them with your brand name “Frontrunner” The issue here is that when the 3rd party uses your registered mark, it must be closely watched for utilization and quality control. This is because if you don’t, such blanket allocations could undermine your trademark’s uniqueness over time, leading to its abandonment. Hence, if you transfer or license your trademark, you run the danger of losing it.
Sounds dangerous, right? Well, generic trademarks are often the victims of their own fame. But how does a trademark become generic?
A trademark becomes generic due to the public’s continued usage of the word to refer to a specific product rather than its source. The more famous an item is, the more likely it is to die a generic death. Aspirin, Cellophane, Zipper, Kleenex, Thermos, Popsicle, and more popular trademarked names have now become generic as a result of improper and ongoing public use.
But how do large businesses monitor their trademark without digging a hole in your pocket? Check our trademark monitoring services that allow you to keep a watch on reports and eliminate irrelevant results. Invest a few minutes a week and monitor your entire trademark portfolio.
How to Stop a Trademark from Becoming Generic?
Seek not to use and stop others using your trademark as a verb, or in multitude, and try to integrate appropriate trademark symbols, i.e.
- ® in case of registered marks
- SM for unregistered service marks
- TM for unregistered trademarks
Portfolio Renewal and Management Failure
The most obvious mistake is failing to notice when marks are due for renewal.
The life of a trademark is of ten years after it is filed with the United States Patent and Trademark Office. After 10 years, it is your responsibility to file for renewal every 10 years. Such recklessness is usually avoided because most large organizations and firms employ docketing procedures to prevent missed deadlines.
Having said that, only checking on a trademark every 10 years is the worst mistake for any brand. This is because a lot may happen in 10 years: new competitors emerge, new products emerge, and new trademark applications are filed.
How to Avoid Loss of Trademark?
- Make sure you are continuously using your trademark with little to no gaps.
- Brand usage instructions can be added to your licensing agreement to define the licensee’s rights and limitations clearly.
- Avoid using others marks and stop allowing others from using your mark in a generic way
Can a Trademark be Overturned?
Yes, overturning or cancellation of a trademark is possible on the following grounds:
- The application for trademark registration was filed with no desire to use it in commerce.
- The proprietor is using the mark in a way that is confusing or deceiving the consumers.
- There has been no use of the mark for 5 years since its registration date.
- The registration application was either misleading or did not disclose important information that might have stopped its registration if disclosed before.
- The owner fails to obey the conditions in the Trademarks Register.
Who Can File A Trademark Cancellation Request?
- Any individual whom the registration harmed can seek its cancellation.
- A person involved in a trademark can also file a cancellation request. While anyone can apply for registration, they can only do so based on the grounds given by the law of the land.
- The Registrar at the Trademark Office can also revoke if there was no renewal request after the expiry of a mark.
- The registered owner can request that the trademark be removed from the register.
Does my trademark expire?
Yes, every trademark expires after 10 years, and the owner can renew it again for 10 years following a proper procedure and submitting the renewal fee.
The lifetime of trademarks may vary with different countries. Make sure you check the relevant laws.
Ready to Take the First Step Towards Your Trademark Journey with TMReady?
ready is your one-stop destination for anything and everything related to trademarks. Our trademark search and registration services are a perfect fit for those who wish to register their trademark. Moreover, our trademark monitoring services cater to those with a registered mark but want to keep a close watch on it for infringement and dilution. Furthermore, we also provide IP paralegal and docketing services to assist you in managing your trademark portfolio.
So what are you waiting for? Visit us and kick start your trademark journey in the right way.