Don’t Let Your Registered Trademark Go Unprotected

BEVERLY A. BERNEMAN

Partner


Don’t Let Your Registered Trademark Go Unprotected

Did you know that “zipper” was once a registered trademark? In fact, the original product was generically known as a “hookless slide fastener” until B.F. Goodrich coined the catchy “Zipper” brand name.

But B.F. Goodrich lost the competitive advantage of the name when the public adopted it as a generic term and B.F. Goodrich failed to take any steps to protect it.

Your trademark identifies both you and your product. As time goes on, your customers or clients associate your trademark with the quality of your product. The Lanham Act (15 U.S.C. §101 et seq.) protects the use of trademarks in commerce. Federal registration of your trademark with the United States Patent and Trademark Office (PTO) provides the basis for protection of the mark. The following steps will help you preserve your rights in your mark:

Keep using your mark. As you use your mark, you establish goodwill associated with it. The trade identity you establish with your mark requires continuous use in commerce and in connection with your goods and services. The requirement of continuous use in connection with your goods and services persists even after registration. Sporadic, casual or nominal use will not suffice. The Lanham Act presumes that you have abandoned the mark if you fail to use a mark for more than three years. Also, if you license your mark to someone else, you must monitor their use of the mark in order to preserve it.

Renew the registration of your mark with the PTO. Federal registration of the mark lasts ten years. However, in order to preserve the registration, certain documents must be filed with the PTO. Sometime during the fifth year of the registration, but no later than the sixth anniversary of the registration, you must file an affidavit of use. This assures that you have continued to use the mark in commerce during the proceeding five years. At the end of ten years, registration of the mark can be renewed by filing an affidavit of continued use. Once you file your affidavit in the fifth year of the registration, your mark becomes incontestable. Once this occurs, no one can challenge your rights in the mark unless it either becomes generic or fraud was used to procure the registration. Failure to file these affidavits can result in cancellation of the mark.

Do not allow your mark to become generic. As a mark becomes famous, the public may begin using the mark as the generic name for the product or service. For instance, Xerox Corporation zealously protects the use of its mark as an identifier of copiers and not as the name for the product itself. Always identify the product distinctly from the mark. A trademark that has gathered sufficient identity with a product or service can give you an advantage in the market place. Developing a program to preserve the trademark will only enhance the value of the mark.