How is Trademark Protection Secured? How is it Lost?

Trademark, Security
How is trademark protection secured?

Registering a trademark is a foundational step to protect your business from counterfeiting and cyber fraud, but it is not nearly enough to protect against Intellectual Property infringements fully. As business owners, you also need to protect your intellectual property rights by actively preventing trademark infringements and counterfeiting. This is known as trademark protection.

Did you know that 13.9 million trademark applications were filed worldwide in 2021 alone? 

Due to a surge in technological dependency, it is becoming more important to protect your business from third parties who may infringe on your registered intellectual property, thereby harming your brand reputation. 

Is it Possible to Lose Your Trademark Rights?

The short answer is YES! It is possible.

Even after getting a trademark registration certificate from an official trademark office such as USPTO or EUIPO, a brand must take certain measures to safeguard its trademark protection status.

At this stage, it is fundamental to understand that trademark offices are simply governing bodies to register trademarks in specific jurisdictions. They are not bound to stop the unauthorized use of your trademark or enforce any rights for your company.

Cancellation of The Registration By the Trademark Trial and Appeal Board (TTAB)

If you have a trademark registered in the US, a trademark cancellation proceeding can be initiated on the grounds of disputes with the Trademark Trial and Appeal Board (TTAB). 

A TTAB dispute can arise when a business submits a trademark application or receives a trademark registration unreasonably similar to another business.

To understand better, Starbucks can potentially contact the TTAB if another coffee brand trademarked the name ‘Sardarbucks’. In this case, the registered trademark will likely be canceled if found to be intentionally misleading.

It is important to note that a cancellation request is bound by time constraints and must be filed within 5 years from the registration date.

Non-Use of Trademarks

It is intrinsic to actively use your trademark since trademark institutions aim to promote trademark usage, not the registration alone.

If a trademark has not been commercially used consecutively for 3 years or more with no intention to use it further, it could result in you losing the trademark.

Subsequently, it is mandatory to submit proof of continued use between the 5th and 6th year of registration and file for a trademark renewal every 10 years.

It is essential to keep a record of use properly documented to minimize the chance of trademark cancellation by litigation. 

Generally, proving non-use by litigation requires conclusive evidence from the petitioners and is difficult to prove.

Genericide

A trademarked name can become generic over time by being used by the general public, known as genericide. Generic trademarks cannot be given trademark protection, and existing trademarks cannot be enforced.

For example, ‘escalator’ used to be a protected trademark name designated to a certain company's manufactured movable stairs. Over time, an escalator is now interchangeably used for any set of moving steps, thus losing its trademark protection status.

Improper licensing

As a registered trademark owner, ensure the usage of the trademark by all licensees is in accordance with the terms of the licensing agreement. If a free hand is given to the licensees, trademark owners risk losing the registered status of their trademarks.

What is Trademark Monitoring and How Can it Help?

Trademark monitoring is the process of regularly searching for and identifying potential uses of a trademark that may infringe on the rights of the trademark owner.

Despite having a registered trademark, 85 percent of the mid-enterprises report they experienced trademark infringement in 2021.Save your brand from potentially losing millions of dollars in revenue by monitoring your IP assets. With Digip, automate the process of monitoring new applications similar or exact to your brand, hunt for potential third-party infringements, and create a complete strategy for brand protection.

Trademark, Security