Attorney, The Creekmore Law Firm PC


piggyIf you have been through the drawn-out process of registering a trademark, you realize it is not a quick and easy process.  Between backlog at the USPTO, office actions from Examiners, and oppositions from the public, there are many hoops to clear before registration.  But did you know that a mark owner’s responsibilities do not end there?  A mark often becomes the most valuable association with a brand.  The tips below will help mark holders ensure the time, energy, and money put into their mark and brand will be protectable and valuable for years to come.

Use the Mark Correctly

Correct use of the mark includes the way the owner, licensees, and consumers use the mark.

Use should always indicate the TM or R symbols to show the mark is registered.  For more information on which symbol to use, check out last week’s article.

Especially in the case of a design mark, brand consistency is key to keeping a mark’s value.  Changing registered logo designs could 1) void a previous mark, as it is no longer being used in commerce, and 2) result in the use of a new, unprotected mark.  Mark owners should establish style sheets that show the correct styling, spacing, color, (if claimed) and placement of the mark when used by internal and external parties.  For example, a style sheet is used by an internal creative team to create marketing materials as well as an external web design team to create a company website.  This will create consistence in mark use.

Avoid Genericide

If you’ve registered a mark, you know that trademark law only protects marks that are arbitrary, fanciful, suggestive, or descriptive with secondary meaning.  Generic marks are never protectable.

Sometimes, a brand’s mark can become almost too strong.  A registered mark can become so popular and overarching that it becomes the one name for products or services in that category—reaching that level of generic.  If consumers use the trademark as the name of the product itself, as opposed to identifying its exclusive source, that trademark loses its distinctiveness. For example, thermos was once a registered trademark.  Consumers used it so frequently and incorrectly to describe insulated containers, it became synonymous with all other products.  Thus, the registered mark “Thermos” became simply thermos.

Mark holders must make sure their marks are being used in a non-generic way.  Hand in hand with the stylesheet recommendation above, owners must make sure their marks are used as capitalized proper nouns, and never as a verb.  One modern-day example is the common phrase “Go google it.”  While Google is very much a protected mark, the phrase “Go google it” or any similar phrases are incorrectly using the mark “Google” as a verb.  This is a gateway to genericide.

For a list of former trademarks cancelled for Genericide, check out this list.

Police the Mark

Many trademark owners believe the work is done when their mark registers.  However, because marks are really about protecting consumers, the mark holder is required to “police their mark.” This means that the owner must make sure others are not infringing on their rights by using the mark without permission, using the mark incorrectly, or using any marks that are confusingly similar.

Policing a mark does not have to be expensive.  Using searches run through Google and other social media platforms to keep on top of who is using your mark.  Run through Instagram hashtags to make sure no one is promoting knockoffs of off-brand use.

Once an owner is made aware of improper use, he or she must act to end such infringement. This is not an option.  Taking action includes everything from sending a cease-and-desist letter to instituting a lawsuit.  If an owner does not act to end infringement, they risk losing their rights to the mark entirely.

And if you’re interested in learning more about trademark and brand development, join us at our next round of Shark Bites this month.

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