In the preceding article, What defenses can people use in trademark actions?, we reviewed the most frequent defenses in trademark actions: fair use, nominative use, and parody. Now, we want to cover situations where you could potentially lose your trademark rights altogether.
Trademarks are supposed to be used. Legislatures and courts frown upon applicants securing marks and then putting them back on the shelves for years to come. Therefore, if the courts determine that you abandoned a trademark, then you will lose the rights that are associated with it. Abandonment is defined as an intent to indefinitely discontinue a mark’s usage. Many factors can be used to identify or even infer the presence of abandonment. However, if a trademark has not been used for three consecutive years, then the courts will assume it has been abandoned.
You also must be very careful of the manner in which you license, assign, or franchise your trademark. If you do so without enforcing sufficient guidelines and controls, then you could forfeit your right to enforce the mark in court. Also, if you merely sell the trademark without any underlying property or assets, then the mark could be voided entirely. The logic for these outcomes is that the trademarks no longer signal the true source of the goods or services.
Trademark owners can lose their protections if their mark becomes generic over time and no longer holds any distinctive qualities. A mark will be viewed as generic if the majority of people think it refers to a class or type instead of a specific source of goods or services. To answer whether a trademark is generic or not, courts will utilize all kinds of evidence including, but not limited to, dictionaries, newspapers, and other materials.
In the next article, we discuss the cost of securing a trademark.
Next: How much will getting a trademark cost?© 2016 John V. Robinson, P.C.
© 2016 John V. Robinson, P.C.
