A Trademark, If You Can Keep It

Many business owners that I work with all too easily fall into the same trap: they work countless hours to tirelessly work to build their brand. They know they must protect it, so they take the responsible route, and obtain a federal trademark registration. After what is usually a long year of waiting, the registration finally comes back, and they can use the highly sought-after ® to protect their brand. And then, as every busy entrepreneur knows, their attention gets pulled elsewhere, as there are approximately 100 hats that must be worn, fighting for our attention every day as business owners.

The danger with this scenario: at this point in the story, these owners of federal trademark rights do not even know that they are at a crossroads, much less, what fork in the road to take.

The simple truth of the matter is that simply obtaining a federal registration for your trademark does not automatically mean that you have lifelong, unassailable protection.

So what steps must be taken to protect your trademark registration, once you have received your federal filing?

  1. Make sure that you file your proper Articles of Renewal (between year 5 and 6) after obtaining your registration. Contact a trademark attorney to assist with this.
  2. Ensure that you are diligently and consistently policing your trademark.

What does this mean? In short, you should make it a habit to regularly run a simple due diligence search on domains, social media handles, and the web (or hire a trademark attorney to simply handle this for you). The danger of not doing so? Without knowing it, you can dilute the meaning of your own trademark by allowing too many similar names to arise, wiping out your own distinctiveness.

This issue arises most commonly with descriptive or arbitrary trademarks; that is, trademarks that are not “fanciful”. There are multiple factors that can contribute to a trademark owner losing their federally registered trademark rights, which can range from factors as simple as failing to file renewal paperwork at mandated times, to failing to use the name in commerce, to (what the most well-renowned, largest brands can fall victim to): “genericization”, which is what can occur when the trademark owner loses the distinctiveness of the mark. This can occur when a name becomes so well known that it becomes synonymous with a “thing”. For example, “Kleenex”, “Xerox”, and “escalator” were all once trademarks that became too generic over time. 

Once a trademark/word merely describes, lists out, or names a characteristic or quality of a good or service, it no longer becomes distinctive, and therefore can not longer be used as a federally registered trademark. Remember “distinctiveness” is one of the gatekeepers into the ability to register a trademark in the first place. Therefore, again, a trademark must maintain its distinctiveness in order to distinguish the goods or services of the company in order to maintain its federal protection. Distinctiveness in a trademark must be protected, as it can be lost.

If a mark is subject to improper use (ie, it’s allowed to slip into what’s called the “public domain”) and is no longer descriptive of the brand itself, it will lose those federal registration rights, and would no longer be able to stand up to lawsuits. And unfortunately, a crafty attorney could use this argument to overcome your own argument that your trademark IS still valid, opening the door for an infringing brand to occur. So, as you can see, it becomes incredibly important that trademark owners keep active watch over their trademark, and take appropriate actions to protect that trademark.

What must be done if you do police your trademark, and find potentially similar names?

Well, we’ll get into this much more in depth in part two of this post, but in the meantime, contact our Tulsa office for first access to our trademark protection services, with availability opening early 2021.

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