By: Michael Goodyear

 

Once you acquire rights to your company or product name through a trademark, that trademark is not set in stone. On the one hand, a trademark could theoretically last forever; on the other, it might last less time than a copyright or even a patent. It is critical that companies, and especially startups, know how a trademark can be terminated through being abandoned or becoming generic.

 

What Is a Trademark?

 

A trademark is a name, logo, design, package, or even a sound or scent that identifies a manufacturer’s goods (or a company’s services) and distinguishes them from others. One of the most famous examples is the iconic Coca-Cola logo. This mark must be used in commerce to be readily identified by consumers as distinct from competitors’ goods or services.

 

The trademark registration process can be arduous in of itself, with even well known logos such as Wal-Mart’s smiley face being denied trademark registration. But trademark maintenance is just as important as trademark registration.

 

How Can a Trademark Be Lost?

 

A registered trademark can lose its protected status in two ways: abandonment and genericide. Trademarks require distinct usage in commerce; that use and distinctiveness must also continue for the trademark to survive. The Lanham Act, the federal compilation of trademark laws, describes the conditions under which a mark is considered abandoned or generic.

 

Maintaining a Registered Trademark

 

Although a trademark could continue in perpetuity, there are several steps the trademark owner must take to maintain it. First, under Section 8 of the Lanham Act, between the fifth and sixth year after registration, the owner must declare that the mark has continued to be used in an affidavit filed with the United States Patent and Trademark Office (USPTO). Section 8 requires the trademark owner to file an affidavit of continued use with the USPTO between the ninth and tenth year after registration as well. Then a subsequent affidavit of continued use must be filed every ten years under Sections 8 and 9 of the Lanham Act. There is a six-month grace period for each of these affidavit filing dates.

 

Along with these affidavits of continued use, the trademark owner must include in the affidavit the goods and services under the registered trademark, specimens showing the current use of the mark, and a fee. The filing fee under Section 8 is $125 per class of goods. If the filing takes place during the grace period, there is an additional $100 fee. The combined Section 8 and 9 filing fee every ten years is $425, with a filing during the grace period costing an extra $200.

 

Failing to renew a registered trademark does not mean that the trademark is abandoned, but it does mean it is no longer registered. Federal registration of a trademark provides a number of benefits, including official documentation, a presumption of ownership, and notice of ownership that would be lost if the trademark is not re-filed.

 

Abandonment by Discontinued Use

 

While a mark can slip into abandonment by failing to file an affidavit of continued use, someone can also petition the USPTO to cancel a trademark because it has been abandoned. Under Section 14 of the Lanham Act, anyone who believes he will be damaged by a mark can petition for cancellation anytime the mark has become abandoned or generic. A mark is considered abandoned

 

(1) “When its use has been discontinued”

(2) “With intent not to resume such use”

 

Nonuse of a mark for three years is prima facie evidence of abandonment. Most cases where the court found trademark abandonment involved at least three years of non-use, with many laying unused for a substantially longer period of time. For example, some abandoned marks were not used for periods ranging from three to six to twenty-three to even thirty years. However, the shortest periods of non-use that resulted in trademark abandonment were just nine months and two years.

 

This can be especially important to companies that may launch a product only to have to stop marketing to improve it and re-release it at a later date. There is a strong incentive not to wait too long, since as little as nine months could be enough for trademark abandonment. Then you have to think of a new trademark all over again and build up use of the new mark in commerce. One of the most infamous cases was Specht v. Google, where Specht owned the mark “Android,” but stopped using it for several years, during which time Google picked it up and started the famous Android operating system.

 

Other Forms of Abandonment

 

The trademark can also be abandoned if it is assigned in gross or if it is licensed out without quality control, so called naked licensing. To avoid assignment in gross, any transfers of a trademark must include the trademark’s goodwill too. To guard against naked licensing, the trademark owner must regulate by whom and under what conditions the trademark can be used.

 

Genericide

 

The other equally important form of trademark abandonment is genericide: death by becoming generic. Becoming generic means that the mark loses its significance as a mark, or no longer distinguishes between the producers of goods or services. Because the point of a trademark is distinguishing between the producers of a good or service, losing this aspect destroys the trademark.

 

This appears in the context of certain goods when we refer to the generic or brand name. Perhaps the most famous case of genericide was when Bayer’s drug aspirin became the generic term for the drug, which led the court to declare the trademark abandoned. Cellophane and Escalator are other trademarks that died a generic death. Dozens more of major brands could be at risk, including Frisbee, Ping-Pong, Plexiglas, and Ziploc bags.

 

How to Protect Against Genericide

 

One of the strongest ways to protect a trademark from genericide is to create a brand name but also have a generic name. For example, you would say buy Coke, but buy a Coke soda. You typically want to avoid using the mark as a verb or as a generic noun, and instead only use it as a qualifier. However, if a mark is truly famous, it can survive becoming generic even if it is used as a generic noun or verb, like Google did in a recent case.

 

Other ways to protect your trademark from genericide include objecting to use of the trademark by others and to give notice of the properly registered trademark with the ® symbol.

 

Maintaining the Mark

 

So to avoid this form of trademark abandonment, continue to sell goods or services across state lines with your mark, or at least show intent to resume use, such as by including the mark in marketing or continuing to use the mark on your website and social media. Don’t transfer your mark without the underlying goodwill or license it widely without quality control. Finally, take active steps to keep your mark from becoming generic. A trademark is difficult enough to create; don’t lose it to abandonment or genericide.