A trademark is anything used in commerce to distinguish the products or services of one company from those of others. Logos, brand names, and slogans are common examples of trademarks. Under U.S. law, trademark rights arise when the trademark is first used in commerce, and continue as long as the trademark continues to be used in commerce. Thus, trademark rights can last indefinitely.

Many famous trademarks, such as Coca-Cola, Budweiser, the Bass logo, and Nestle have lasted for over 100 years. Trademark rights generally cease only when the trademark is abandoned and no longer used.

Federally Registered Trademarks

Federal trademark registrations are governed by additional rules. Placing a trademark on the federal trademark register at the United States Trademark Office bestows many additional benefits on the trademark owner, for example the right to exclude others from using a similar trademark anywhere in the country.

However, to keep the benefits of a registered trademark, the trademark owner  must abide by the requirements of the Trademark Office. These requirements include the obligation to file a renewal application every ten years and to verify that the mark continues to be used in connection with the products and services listed on the trademark register.

Thus, a trademark registration lasts for ten years, at which time it must be renewed. If regularly renewed in a timely fashion, the trademark registration can last forever. Please note that there are some additional requirements during the first ten-year term of a trademark registration which also must be satisfied for a trademark owner to continue enjoying the benefits of registration. Please review the requirements carefully and contact a trademark attorney to aid you in ensuring that you meet all of the relevant dates.

Other Ways Trademark Rights Can Be Lost: Genericity, Failure to Enforce, Authorizing Uncontrolled Use

Trademark rights can be lost under some circumstances other than abandonment or failure to meet official filing requirements. For example, trademark rights are lost when a trademark becomes generic, and is used to identify a certain category of products or services, rather than those of a certain company.

Examples of trademarks that became generic include Aspirin, Cellophane, Crock Pot, Dry Ice, Escalator, Trampoline, and Zipper. Each was originally a trademark used only on the product of a certain company, but was so popular that it became known as the generic name for any similar product.

As a result, the original trademark owners are no longer able to prevent their competitors from using the same words in connection with their own products. “Genericide” is the colorful term used to describe the process of losign trademark rights due to genericity.

You can also lose your trademark rights by failing to enforce your trademark against known infringers or by allowing others to use your trademark without controlling the quality of the products or services they provide under your mark.

Summary

Continue to use your trademark in commerce and your trademark can last forever. But to maintain your federal trademark registration, you must renew every ten years and take other steps required by the Trademark Office. Genericity, failure to enforce your trademark rights, and failing to control the quality of authorized users of your mark can also lead to premature loss of trademark rights.

A trademark is anything that you use to distinguish your products and services from others. You want to form an association in your customer’s mind between your business and the product or the service that you’re providing. You want to create a good experience for your customers and you want them to associate that good experience with you to know who gave them that good experience and where they can go to get some more. So people know that branding is essential. It’s essential to marketing and it’s essential to building your business and growing your business. But what many people do not realize is that trademarks are governed by a strict set of laws and that legal considerations are essential when you’re selecting a name, any kind of product name, a logo, slogan, anything that you’re using for your products. The law protects the right of the first business to use a given trademark within a certain geographical area to exclude any other businesses in a similar industry from using that mark or anything that would be confusingly similar.

There’s two reasons that the law offers this protection. The first one is consumer confusion. If two businesses are using the same trademark in similar industries, that’s gonna be very confusing for the customers. They’re not gonna know which company is producing the products that they’re buying. They’re not gonna know who to call to complain to, to return their product, to ask for service, technical support. And it’s a situation that the law tries to avoid this confusion in the marketplace.

The second reason is unfair competition. Let’s take an example, the Apple logo, very famous, well known for the high quality, the service that’s provided by the Apple Computer Company. So a new business that’s coming out manufacturing computers, of course they would love to use the Apple logo because people are going to associate them with the quality of Apple. They may be confused and think that they are Apple. And so people that are looking for Apple computers may go to them. It’s an instant source of customers. It’s great for them, but it’s not fair for Apple. And it’s going to damage Apple’s reputation because the quality and the service of this brand new business probably is not as good. So both of those things are policies that are served by the laws that protect exclusive trademark rights to the first person to begin using them.

So you can see that there’s a legal issue here when you’re picking your name or your logo, you can’t just think about the creative considerations, you have to also consider, is this going to infringing on anyone else’s trademark rights. You should at least do some research to see if anybody else in a similar industry is already using a similar name or logo. You want to try to avoid those because if you do pick a name like that, that existing business can come after you to make you use a different name, or even for monetary damages.

But there’s also an additional consideration which is that recognizing that it’s difficult to do really thorough research of all the local businesses and what marks they’re using. There’s been created a federal trademark register. And that is a list, a nationwide list of active trademarks. Now of course you want to include this list in your research. It makes it much easier to find marks that may be conflicting with your own. But it also introduces the consideration of whether you want to place your own mark on this list. And putting your mark on the list has a number of advantages. It gives you nationwide rights to use the mark instead of just limited by geographic scope. That’s very important. It makes it easier for other people to find your mark when they’re picking their own name and to avoid any conflict with yourself. It allows you to use the registration symbol when you’re putting your mark on your goods. You can use the little R with a circle around it. It’s a little professional looking and it makes it a lot easier for you to enforce your rights.

So anybody who’s involved in working with new businesses or new branding, new product lines or services, or any kind of new marketing campaign, needs to have a basic understanding of the trademark laws. You should be at least doing a trademark search any time you’re coming up with a new logo or brand name. And you should really think about whether it may be beneficial to you, worth the cost to file for federal trademark registration. It’s not just a creative and interesting name and logo, although that’s very important. But what’s also important is avoiding expensive legal conflicts and ensuring that you’re able to protect your brand name and avoid unfair competition.

Thank you very much. This has been a discussion of trademarks, what they are and why you should care about them. Again, I’m Cliff Hyra with Hyra IP, an intellectual property law office. You can find more information about my firm at HyraIP.com. If you have any questions about this podcast or trademarks in general, you can contact me directly at the contact information on my website, or Podcasts@LegalRiver.com. Thank you.

Thanks for listening to this edition of the Legal River podcast. If you have a business law question you would like to see answered in a podcast, please email us at Podcasts@LegalRiver.com. To reiterate, all views expressed in this presentation are intended only as a general discussion of the issues and should not be regarded as legal advice. For additional details or advice about a specific situation, please consult legal counsel directly.

1. Register Your Trademarks.  Seems pretty straightforward, right?  You might be surprised by just how many businesses neglect to do this, or fail to do it in a timely enough manner to maximize their company’s profits associated with branding.  As soon as you work out your company’s specific name, logos, slogans, certification marks, and any other important marks, you should immediately register them with the United States Patent and Trademark Office (the “USPTO”).  It may not be mandatory to register them in order to obtain and maintain trademark protection, it makes it much easier when it comes to enforcing trademark rights.  You should also consider applying now for registration of other available marks that you think the company may use in the future.

2.  Use Trademark Notices.  Make sure you use proper trademark notices on all trademarks, service marks, and certification marks your company owns and uses (i.e. TM for non-registered marks and ® for registered marks).  Again, while these notices aren’t mandatory, using them consistently can make it easier to enforce your IP rights later on, especially when it comes to countering an “innocent infringement” defense at trial.

3.  Enforce Your Trademark Rights.  Registering for trademark protection does you no good if you don’t periodically search for unauthorized use of your marks and then enforce your rights.  It’s a good idea to conduct periodic web searches and any other necessary means to track how your marks are being used.  Enforcement may not necessitate that you file an actual lawsuit–you can start with a request that the unauthorized user cease and desist using your registered mark.

4.  Get It in Writing! Whenever your business lets others use any of its protected marks, including its name, logos, trademarks, or other IP, make sure you set out the terms and conditions of the license in writing.  Exclusive licenses (permission to use) and assignments (transfer of ownership) have to be in writing in order to be legal and binding.  Oral or implied non-exclusive licenses are possible, but often tough to interpret and enforce.  Just save yourself the headache and get it in writing!