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How to preserve your trademark: Extended Entry
If you are going to take the time and energy to obtain a trademark and properly register it with the federal government then you are going to want to make sure that you preserve your trademark. One of the best things about trademarks is that they are protected for life, but you do need to make sure that you renew the trademark on occasion by filing a trademark renewal application. One thing that you need to know about renewing your trademark is that the protection is good for about a period of ten years, which means that every ten years or so you are going to need to renew your trademark to maintain your protection. This process will help to preserve your trademark, but you are also going to need to make sure that you constantly use your trademark. The reason for this is in order for your trademark to be protected and in order to renew it you have to give the U.S. Patent and Trademark Office proof that the trademark is being used, otherwise they can cancel turn the trademark into a generic trademark because of abandonment.
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But not only do you have to prove that you are using the trademark to help preserve it you also have to make sure that you are using your trademark properly. In fact properly using your trademark is vital to establish and maintain your trademark rights. The reason for this is that often time's trademarks can become less distinctive through misuse. It can also become generic if others are using the mark as if it were the proper name for the type of good or service being sold. A perfect example of this would be the term Escalator; it used to be a trademark but has now become a generic term.
Helpful Resources: 1. Trademark Protection and Monitoring This website offers you the chance to pay for their services. What they promise to do is to make sure that your trademark is properly protected and maintained. 2. Ladas and Parry - Registering your Trademark 3. Using and Maintaining Trademarks 5. Litigation Canada Patent, Trademark and Copyright 6. Trademark it for Your Website! 8. James and Wells Intellectual Property - Patent and Trademark 9. ipFOUNDRY - Trademark FAQ 10. DIPG Trademark Fee Schedule and Report 2008 |
One thing that newcomer's don't understand is what they can do to help ensure that their trademark is being used properly. What you need to know is that your management and control over how the trademark is being used will help to determine to large extent on whether or not you are going to be able to preserve your rights in a trademark. By using your trademark properly you are going to clarify that the trademark is a brand and not a type of product. But what's more is that if you fail to use your trademark properly it can actually be used against you in court, especially if your challenger is claiming that your mark is not distinctive.
Usually how this happens is that the court views your own misuse of your mark as an admission of guilt, basically you are admitting through your actions that you do not think of your trademark as your proprietary property in the first place. So in that case the court is going to rule against you and take away your trademark. But the good news is that there are some rules that you can follow to help ensure that you are using your trademark properly, which will help eliminate the risk of your trademark being challenged.
Here are some rules that you are going to want to follow so that you can establish your trademark rights, in addition to preventing any problems that can erode the enforceability of your trademark rights once you have established your trademark.
Rule one:
Make sure that you affix the trademark to the goods or services provided. Basically what affixing your trademark does is to let people know that your trademark is being used in commerce. In fact this is actually necessary in order to show that the mark is being used in commerce, and showing that the mark is being used is a fundamental requirement for trademark ownership in the United States.To ensure that the trademark is affixed to the goods the mark should be placed on the goods themselves or on their containers, attached tags or labels. The affixation requirements for goods can also be satisfied if the mark is prominently featured on a display that is associated with the actual goods. But if none of these ways of affixing the mark to the product is possible you can still use the mark on documents that are associated with the sale of the goods, but this should only be used as a last resort. If you are providing services than your trademark is considered affixed if it is used in the sale or advertising of the services, but it must be used in direct and explicit reference to the services provided.
Rule two:
You must always use the mark as an adjective. This is very important for you to do and you need to make sure that you never use the mark as a noun or a verb. A great example would be not allowing your marketing material to read "HEART is the best dog treat on the market." What you want to say instead is "HEART brand dog treats are the best on the market" or even "HEART dog treats are the best." Although this might sound pretty small and trivial it is actually extremely important in preserving your trademark and the consequences for not following this rule can be costly. The reason for this rule is that if your mark is challeneged on the basis that it is generic, you are going to have a harder time arguing that your mark is not genric if you have treated it as if it were a class of goods instead of a single brand in a class of goods. Meaning that if you use it like a noun or a verb you are running a very high risk of getting your trademark classified as generic, which means you no longer have any protection for your trademark.
Rule three:
Make sure that you set out the mark from the surrounding text. In this case you are going to want to italicize, underline, capitalize and/or bold the mark whenever it appears in normal text. The reason that you want to do this is because it will make your mark stand out from the generic words for the product that you are selling. But it is also going to help you maintain the distinctive nature of your mark in the minds of the various consumers.
Rule four:
Do not dissect the mark by abbreviating it. Basically this is talking about making sure that you use your entire trademark whenever you use your mark. You want to avoid shortening the trademark to one word if it contains more than one lingual or graphic component. The reason for this is that dissecting trademarks can cause them to lose their distinctive quality in the minds of your consumers.
Rule five:
Avoid plural or possessive forms of the mark. You never want to use your trademark in the plural form or in the possessive form because it can be very problematic in how your customer's view your products. Basically the plural form encourages the public to view your trademark as if they were just another word for the product that you are selling rather than viewing it as your trademark, basically it helps in turning your trademark generic rather than letting it stand out. The possessive form also presents the same problems that the plural form does; they are in other words creating synonyms for your products.
Rule six:
Provide notice next to your mark whenever possible. The way that you can provide notice of your trademark rights is to use certain symbols next to your trademark, but what symbol you are going to use is going to depend on if you have registered your trademark with the federal government or if it is a common law trademark. But the symbols that you can use to identify a trademark are: TM, SM, or the letter R with a circle around it. If you are using a common law trademark you will use the letters TM, if it is a common law service mark you will use the letters SM, and if you have actually registered your mark with the federal government then you will use the letter R with the circle around it. But you can also provide notice by using a phrase like "QRS Company is the registered owner of the trademark TUV," or "Reg. U.S. Pat. Off." But the only time that you should use that former phrase is whenever the ownership of the trademark is not obvious from the context in which it is used. But the reason that you want to use these symbols is because if you fail to notify the public that a particular word, phrase or symbol is your proprietary property, you are also going to have a very hard time convincing the courts about the same thing. But also, and perhaps more importantly, is that by providing notice next to your symbols you are actually alerting the world to your claim of right, and this will also help to deter other people from innocently adopting a similar symbol to use with their products.
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