IN THIS VIDEO WE DISCUSS, HOW ARE TRADEMARK RIGHTS LOST? TRADEMARK INFRINGEMENT⚖️ TRADEMARK LAW #LAWFIRM #TRADEMARK
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Unlike other areas of intellectual property law, trademark protection does not have a set duration or definite expiration date. Trademark rights only expire once the mark is no longer being used in commerce. However, Federal trademark registration expires ten (10) years from the registration date unless renewed within one (1) year prior to expiration. Moreover, the rights in a trademark can be lost through:
(1) Abandonment; (2) Improper licensing and assignment; and (3) Genericity.
A. ABANDONMENT OF TRADEMARKS
An abandonment of the trademark occurs when its use is discontinued with an intent not to resume. Intent can be inferred based on the circumstances surrounding the discontinuance. Non-use of a mark for three (3) consecutive years is prima facie evidence of abandonment.
B. IMPROPER LICENSING AND ASSIGNMENT OF TRADEMARKS
The rights in a trademark can be lost and the trademark cancelled if the mark is licensed without the proper quality control and supervision over how the mark is being used by the licensor. Moreover, if the mark is assigned in gross without the corresponding sale of the business assets which are the underlying product for which the mark is attached, then the mark will be cancelled. Simply put, under these situations, the purpose of the mark in identifying the source of the goods no longer exists.
C. TRADEMARK GENERICIDE
A mark can lose its distinctiveness when in the minds of the public the mark symbolizes a broad category of products. The mark no longer specifically identifies the source or manufacturer. The mark in fact has become a generic term used by the public. To determine genericity, Courts will evaluate: (1) dictionary definitions, (2) use by newspapers and magazines, and (3) attempts by the trademark owner to police its mark. For example, the terms ìescalator,î ìthermos,î ìaspirin,î ìnylon,î ìpost-it notes,î and ìcellophaneî have become generic terms.
D. DUTY TO POLICE YOUR TRADEMARK
It is important to note that a trademark owner has a duty to police infringing uses of its trademark. It is solely the responsibility of the mark owner to file a civil lawsuit in State or Federal Civil Court in order to restrict infringement. If a trademark owner does not enforce its trademark rights or otherwise fails to maintain quality control over the trademark (i.e. a naked license)Ç trademark rights may be lost. Cease and Desist Notices should be sent before initiating litigation.
