The Business of Trademarks: Part 2

News & Events

The Business of Trademarks: Part 2

Alert Date: September 11, 2017

By: Joseph R. Falcon, III
Related Practice Areas: Business and Intellectual Property

(NOTE: This is the second of a two-part series on the importance of trademarks. The first part, which covered federally registering your trademark, can be found here.)

Even if you are successful in federally registering your mark, misuse of your mark may result in losing your right to enforce the registration. The term misuse is relative and generally does not lead to a removal from the registry, but your use may affect the ability to enforce rights granted by the registration.

The rights established from a federal registration can last indefinitely, as long as the owner continues active use of the mark in connection with the goods/services in the registration. Actively use your trademark, and you remain in good standing with the courts.

There are certain guidelines you could follow to avoid dilution or your ability to enforce your trademark:

USE THE MARK FOR ITS REGISTERED USE ONLY: Most importantly, if you received a registration of your mark in association with Product X, then use of the mark with Product Y is not protected under the registration. Using the mark with product Y only provides common law rights. It is recommended that you file for another registration, but now in association with a new class of goods/services.

USE THE MARK WITH YOUR GOODS: The mark should be placed on the parcel in which the goods are packaged. Tags or labels may be used as well, which are attached to the product, and provide greater identity of the mark.

USE IT AS AN ADJECTIVE: How the mark is used in a branding sentence is just as important as keeping it in active use. Only use your trademark as an adjective – do not use it as a noun or a verb. So “Drink YOUR MARK Cola” is correct, but “Drink *YOUR MARK*” could lead to issues.

NO PLURALS OR POSSESSIVE USE: “YOUR MARK’s Cola” should not be used.

DISTINGUISH YOUR MARK: A mark should be adequately distinguished in presentation, especially in regards to the surrounding text and symbols. Your mark can be capitalized, underlined, italicized, placed in quotation marks, or even depicted in boldface type, as each new distinction makes it more distinguishable. Since trademarks are used to create distinct commercial impressions in regard to the offered goods and services, your trademark should be distinguishable.
 
It is important to know that certain actions must be taken to maintain your registration, especially if in any changes in use have occurred. Therefore, if you have any questions, please feel free to contact me or consult one of Barley Snyder’s trademark attorneys to help you decide if you are taking the proper steps to maintain your registration.