Hello!
I am finally back from San Francisco! I attended PLI's Intellectual Property Law Institute Conference this past Thursday and Friday. It was awesome! We discussed intellectual property issues in virtual worlds, social networks, and blogs. I was in IP Nirvana! It was truly great and over the next week, I am going to share with you the latest and greatest in IP Law. I know you will enjoy it!
Today,I am going to discuss how an individual or entity loses their trademark rights. The top three reasons are:
1. Failure to prosecute infringers. I can not tell you how important it is to prosecute (prevent) trademark infringers from unlawfully using your trademark. If you do not, your trademark is considered weak. Furthermore, if you take no action to prevent infringers and their use of your trademark is overwhelming, you can lose your trademark rights. Essentially, your trademark will lose its uniqueness to your product or service.
2. Abandonment by non use or change in the nature of goods or services sold under the trademark. For example, you register your trademark to uniquely identify plumbing services. Subsequently, you stop providing plumbing services and you now provide medical testing services. However, you do not change the trademark. The trademark originally used to identify plumbing services can not and will not identify medical testing services. You must apply for and obtain a new trademark to identify medical testing services. Also if you do not actively use a trademark in commerce for 3 years, it is evidence that you have abandoned the trademark.
3. Genericization of trademark. This happens when a trademark becomes the common name for the goods or services and ceases to function as a source for the goods. For example, ASPIRIN is an example of a trademarks that has become descriptive of goods instead of an indication of a source for a particular good. So we associate Aspirin with the headache medication instead of a brand like Bayer Aspirin. Genericization of a trademark can occur if a commercial campaign or promotion is too successful. A company must takes steps to make sure that their trademark does not become generic. For instance XEROX Corporation is an example of a company that has prevented its mark from becoming generic. XEROX used an extensive advertising campaign which informed consumers to "photo-copy" documents with XEROX machines. Also XEROX constantly used XEROX "Brand" to identify its products.
Remember its all about brand management. As a trademark owner, you have to manage your brand to ensure your product is identified correctly, your brand is conveying the correct message, and to prosecute trademark infringers. I hope this information was helpful. Please leave a comment or email me if you have any further questions.
