Got a trademark? Don’t make these mistakes and lose your rights!
Game lawyer Zachary Strebeck examines some of the ways that a trademark holder can lose their rights. These issues range from non-use to becoming generic, and are all dangerous if a mark is to maintain its distinctiveness.
So, you’ve registered your trademark? Congratulations, but that is really just the first step. There are a number of ways that a trademark holder can lose the rights in that mark if they are not careful. Here are a few of the big ones:
In some ways, this is a good problem to have, but it can result in the loss of a trademark. When a mark becomes so well-known and associated with a product type, rather than a brand, it may be considered generic. As we saw in another post, a generic mark is the least distinctive and not eligible for registration or protection.
Consider the case of the escalator. It was a trademark owned by the Otis Elevator Company at one point, and its competitors had to use other names, such as Electric Stairway and Motorstair. However, as time went on, the Escalator name became the generic term that people used to refer to these movable stairs. The USPTO found that even Otis themselves were using the mark in a “generic” way. They were stripped of their trademark rights, and suddenly anyone could refer to their moving staircases as “escalators.”
Other examples of brands that suffered from genericide include Aspirin and Thermos. But consider Band-Aid: Johnson & Johnson works hard to ensure that they are called Band-Aid brand bandages, or some similar form, in order to keep the Band-Aid mark from becoming generic. Google, Velcro and Kleenex make similar Herculean efforts to fight genericide.
I said before (cheekily, of course) that this is one of those good problems to have. If you have a mark that is so popular as to be synonymous with the product itself, you’re pretty successful. However, once your mark becomes generic, others can capitalize on that goodwill and do harm to both your mark and your company.
When a trademark owner allows others to use their mark, this is known as “licensing” the trademark. When licensing a mark, the owner has the obligation to police the use of the mark to ensure that the use maintains the same standard of quality. Failure to do this could result in the loss of the exclusive rights granted by registration.
Usually, a properly-written licensing agreement will allow the mark holder to do this quality control. It will give them a way out of the agreement should the trademark standards not be maintained by the licensee.
Dilution of the mark:
When a mark is not licensed, but is used by another party, this is known as dilution of the mark. This can occur in two ways: blurring or tarnishment. Blurring is simply the use of a mark by a party that is not the original source of the trademark. This “blurs” the source in the eyes of the consumer and lessens the strength of the mark. Failure to take legal action in these cases could lead to cancellation of the mark.
Tarnishment, on the other hand, is the use of the mark by a third party in a way that is lewd, degrading or otherwise puts the mark in a bad light. This could include involving the mark with sex, crime or drugs that are not part of the original mark. For instance, a company creating adult novelty items using the mark would be an example of tarnishment. As with blurring, failure to take action against a party who is tarnishing a mark could result in the loss of those rights.
Non-use of the mark:
Lastly, one of the easiest ways to lose trademark rights is by not using the mark. An abandoned mark allows others to begin using the mark. Generally, this requires an intent not to continue use of the mark and a certain period of non-use. This is usually accompanied by a failure to renew a registration or specific advertising by the company that they are no longer using that mark.
Remember, trademark rights are based in the use of that mark as a brand identifier. If a company is not actively using a mark or they are using it in a way that does not identify a brand, this could put those rights in danger of being lost.
For information about how to protect your trademark, why not contact an attorney for a consultation? Also, be sure to check out my free eBook that covers trademark and other legal issues faced by game developers.