Protect Your Trademark | 7 Surprising Ways You Could Lose It

By: Patricia H. Jander

Originally posted: September 17, 2017

Trademark holder in design office, smiling at camera

Trademarks help companies develop a distinctive brand and create a powerful, immediate connection that the business is a source of certain goods or services. For example, Ford’s logo and corresponding trademarks are meant to create an association between Ford and automobiles.  

Understandably, trademarks are important assets for companies. Preserving them requires regular renewals, careful attention, and oversight. Trademark owners must maintain the authenticity and uniqueness of their trademarks to avoid losing them.  

Here are seven ways you could lose your trademark.  

1. Not Using Your Trademark

The most common way to lose a trademark is through abandonment. The United States Patent and Trademark Office (USPTO) considers a trademark abandoned if it’s not used in commerce. There are some exceptions – such as temporary periods of non-use – but if you stop using your trademark in your business, the USPTO will cancel or expire your registration.  

For example, Bell’s produces a seasonal beer, OBERON. Bell’s doesn’t sell OBERON year-round, but it intends to – and does – relaunch the product every summer. Their temporary period of non-use is excusable and doesn’t affect Bell’s trademark registration. 

However, if a company discontinues a product because of low demand or other business reasons, it abandons its rights to the trademark. Once a trademark is abandoned, any entity can register the trademark – as if it’s new – and secure the rights to it.  

2. Misusing Your Trademark

Regularly misusing your mark can diminish its unique quality until the mark is no longer meaningful. If it loses its distinctiveness, you lose your trademark rights.  

Generally speaking, trademarks should be used in a manner that’s different from the surrounding text and serve as an adjective followed by a noun. For example, “OREO® cookies” would be appropriate trademark use, whereas “oreos” is improper.  

Consumers commonly misuse trademarks, but they bear no responsibility to protect them. Trademark owners should exercise great care to ensure they don’t misuse their marks and licensees are following usage requirements.  

3. Naked Licensing / Failing to Maintain How Others Use Your Trademark 

If third parties want to use your trademark, you may grant them permission via a license. The trademark license should include quality control provisions that require the licensee to use the trademark correctly. If a licensee fails to address quality control measures (called a naked license) or if you fail to enforce quality control measures, the USPTO may deem the mark abandoned. You – the licensor – could lose rights to the mark.  

4. Failing to Record Your Trademark Transfer

If you transfer ownership of a trademark but don’t update your information or file the required documents with the USPTO, two things are true: 

  • The assignment is invalid.  
  • The recipient acquires no rights to the mark. 

These are commonly known as assignments in gross or naked transfers. The parties involved may believe the trademark has been transferred, but if it’s not federally recorded with the USPTO, all parties lose their rights to it. 

5. Allowing Your Mark to Become Generic

Sometimes, a trademark becomes so successful that it becomes synonymous with an entire product category. Consider this — What do you put on your finger after getting a cut? An adhesive bandage or a “band-aid?”  

Most consumers refer to adhesive bandages as “band-aids,” regardless of the brand they’re using. This nearly cost BAND-AID its trademark and forced BAND-AID to revive the distinctiveness of its brand to maintain its trademark rights.  

If your trademark becomes too generic or common, you can lose it. Examples of genericized trademarks include app store, aspirin, and thermos. It’s important for trademark holders to take reasonable measures to police others’ use of the mark to prevent this from happening.  

6. Failing to Protect Your Mark

If anyone infringes upon your trademark and you fail to stop them, the USPTO may interpret your inaction as abandonment. Now, you aren’t required to start a lawsuit for every infringement activity that pops up, but you should take regular action to protect the mark.  

You can periodically search for your mark on the internet or through the USPTO database to police whether another company is using your mark. You can use cease and desist letters or co-existence agreements to stop infringement activities.   

7. Altering Your Trademark

Finally, if you rebrand your longstanding trademark and your original trademark changes so dramatically that its commercial impression is transformed, the USPTO will consider your original trademark abandoned.  

Setting up a trademark doesn’t guarantee that it’s yours forever. It requires ongoing due diligence to ensure appropriate use, distinctiveness, and ownership. If you need assistance with your trademark – from registration to renewal to recovery – please contact Smith Haughey. 

About the Author

Patricia Jander is an attorney who practices in the areas of business transactions, mergers and acquisitions, real estate, trademark, copyright, trade secret, and internet law. She earned her law degree from the Michigan State University College of Law.

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Smith Haughey can support your intellectual property requirements as well as trademark applications, monitoring, and enforcement.