A trademark is a word, phrase, symbol, and/or design that's used to distinguish one product from another. Trademarks do not have to be registered with the U.S. Patent and Trademark Office (USPTO), but registration makes enforcement easier. A registered trademark is entitled to have the symbol ® after its name.
An unregistered trademark is enforceable under a law called the Lanham Act. When a person or company owns a trademark—registered or unregistered—they can enforce it, making sure no one else uses it. A trademark does not expire but can become dead for several reasons. When a trademark is dead, it is no longer enforceable from unauthorized use.
Ways a Trademark Can Die
There are several situations that can lead to the death of a trademark.
- Genericity. If a trademark becomes generic, it is no longer enforceable. This can happen when the general public starts to associate the trademark name with the actual product itself. Once this happens, the name is no longer uniquely referring to one brand from one company and the trademark is no longer enforceable. "Thermos" and "Cellophane" are examples of trademarks that became too generic. Companies such as Kleenex and Xerox struggled to keep their trademarks from becoming generic.
- Abandonment. If a trademark is abandoned by the owner, it dies. Abandonment happens with the owner stops using it with the intent to no longer use it. Usually, if a trademark has not been used for three years and the owner doesn't plan to use it again, it is considered abandoned.
- Improper licensing. A trademark owner can give someone else the right to use the trademark. This is called a license. It is the owner's responsibility to ensure the licensee is using the trademark properly and producing the product it is for. In this situation, quality control is important to protect the trademark. If the product is not properly produced to meet the standard of the trademarked item, it can kill the trademark. So for example, if you license your trademark for tires but the licensee makes defective tires that won't even stay on a car, the trademark would be dead.
- Assignment. Selling the mark without selling the product can be deadly. If a trademark is assigned to someone else but there is no accompanying sale of assets, the trademark may be killed by the assignment. For a trademark to be valid, it has to fulfill its purpose of identifying the product it was created for. For example, if you assigned your trademark for super-soft fleece jackets but didn't also sell the materials to make the fleeces, the trademark is not valid.
Enforcing a Dead Mark
Even if a trademark is dead, the owner may still be able to revive and enforce it. However, if the mark died through no fault of the owner's, it could still be valid. For example, if a mark was cancelled because the owner didn't respond to a snail mail request from the USPTO, the owner can revive the mark by proving he never received the notice. In general, if you're trying to revive a trademark, it's best to reapply—or apply, if it was not previously registered—for USPTO registration to protect it.
A trademark that died and is then resurrected by someone other than the original owner is called a zombie trademark. The new owner can benefit from whatever lingering recognition or goodwill is associated with the trademark, but courts decide this on a case-by-case basis by considering how much recognition and goodwill a mark actually has. If the trademark was recently abandoned and has a lot of recognition, courts may deny zombie ownership.
Trademarks are an important way to protect a product. Once you have a trademark, keeping it alive will allow your product to continue to be protected.
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