The following is an edited transcript of my video “How Can You Avoid Losing Your Trademark Rights Over Time?”
There are four things that a trademark owner should do to ensure that they don’t lose the strength or protection in their trademark, even after it’s registered.
- The first one, perhaps the easiest one, is use the ® R with a circle symbol frequently in connection with the registered trademark. You don’t have to necessarily use it all of the time, but I would recommend using it at least a fair amount of the time, and in prominent ways.
- Second thing is to make sure that you track the renewal deadlines and renew on time and properly. Trademark registration requires a renewal at the USPTO. The initial renewal is due after five years of registration, then after 10 years, 20 years, et cetera. It’s complicated to track and follow those renewal deadlines because each deadline also comes with a year-long period. For example, when I said five years, it’s actually not due until the sixth anniversary of the registration, the first renewal filing or maintenance document, and so there’s a lot of nuance and complication to the renewals. And there is a grace period for each renewal filing available as well. Make sure you’re docketing and on top of the renewal deadlines. See my blog or other episodes where we talk about that in greater detail.
- Another important way that trademark registration owners can make sure they don’t lose rights over time is to avoid using the trademark generically. For many businesses that are nowhere near becoming ubiquitous and household names, this is not a huge concern, but something to be aware of anyway. The way to do this is to avoid using your trademark name as a verb, and use it as an adjective. Starbucks does a nice job with this. Their word for a frozen blended beverage is the Frappuccino, that’s a registered trademark. You’ll notice on their menus and other things, they don’t just say Frappuccino®, they say something like, “Frappuccino blended coffee drink,” to use it as an adjective and make sure that people know that Frappuccino is a specific type and brand of beverage, not a generic word for any frozen coffee beverage. Same thing with Kleenex®: If you look at a Kleenex box or packaging, in very small print next to or under Kleenex, it says, “Brand tissues”. They are trying to remind people that tissues is the generic word for the product, and Kleenex is the brand name. By avoiding using your trademark generically, you’re going to keep it strong and avoid it becoming weaker over time and becoming a common term.
- Finally, the fourth important tool for making sure that your trademark stays protected over time—even once it’s registered—is deal with infringements, and generally deal with them sooner rather than later. Brand owners for monitor for this by setting up some sort of search of the internet, perhaps of the USPTO records, on a quarterly or some other basis. It doesn’t take a lot of time. It’s something you can probably do on your own. There are search services out there, but they can be expensive. A great tool for that is Google will actually set up alerts where you can put in a name or a phrase and quotes, and you’ll get an email alert when new results come up that match it, I suggest using tools like that. And when you find what might be a trademark infringement situation, talk to a lawyer and deal with it relatively quickly: the longer somebody uses and commits to and invests in their brand, the more likely they are to spend time and money to fight back for it.
Those are the tools that you want to think about as a owner of a registered trademark to ensure that you are keeping it as strong as possible, keeping it registered and renewed.
