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Trademarks: Making Your Mark and Keeping It

Q: What is a trademark?
A: A trademark is a specific type of mark used on goods, or on the container in which goods are sold, to identify and distinguish products from other similar products. Trademarks can be found in the form of words, phrases, logos, movie titles and even character names when used to identify and distinguish, set apart, and, ultimately, sell the specific product.

Q: Is trademark protection permanent?
A:
No. Registration of a trademark with the United States Patent and Trademark Office does not guarantee its perpetual life. Trademarks can be lost through abandonment, cancellation, or expiration. They may also become generic and enter the public domain, may be terminated if used improperly, or may be awarded to another party in the course of litigation.

Q: How is a trademark abandoned?
A: A trademark is abandoned, and the owner no longer has exclusive trademark protection, if the owner of the mark deliberately stops using the mark in commerce, makes no attempt to preserve the mark, or fails to monitor proper use of the mark for a continuous period of three years or more. For example, if the owner of the trademark Minute Maid® orange juice were to suddenly stop using the mark to market its products and took no steps to protect the mark from use by others, the mark would eventually be cancelled or expire for non-use and abandonment.

Q: How do trademarks get cancelled?
A:
Generally, trademarks registered with the United States Patent and Trademark Office are valid for a term of 10 years and may be renewed in 10-year increments. However, the Commissioner of the Patents and Trademarks Office will cancel trademark registration after six years unless the owner files an Affidavit of Continued Use before the end of the sixth year following the registration date. Basically, an Affidavit of Continued Use notifies the U.S. Patent and Trademark Office that the registrant intends to continue using the mark in commerce.

Q: When does a trademark expire?
A: Trademarks will expire by law after 10 years unless the owner files an Application for Renewal before the end of the tenth year following the date of registration. Provided there are no problems, the trademark will be renewed for another 10 years. Problems with renewal may occur if the owner lacks proof that the mark is still being used in commerce or if there is proof that the mark is no longer being used with the goods and services specified on the original trademark application.

Q: How does the trademark owner verify the trademark's registration date in an attempt to avoid cancellation or expiration?
A: Each trademark is issued a Certificate of Registration from the Commissioner of Patents and Trademarks of the United States Patent and Trademark Office. The Certificate displays the trademark as it appears on the Principal Register, the official list of distinctive trademarks and service marks at the U.S. Patent and Trademark Office, and specifies the exact registration date.

Q: How do trademarks become generic and enter the public domain?
A:
For trademark purposes, the terms "generic" and "public domain" are essentially synonymous. A word or symbol in the public domain such as "corn flakes" is classified as a generic mark because it no longer distinguishes a specific good or service from that of the competition. Instead, the mark is used throughout the market place to refer to an entire type of product or service rather than to the product or service of one specific owner. If a mark becomes generic and enters the public domain it ceases to be an exclusive mark and no longer qualifies for trademark protection.

Q: Is it possible to prevent a mark from becoming generic?
A: Yes. If the owner of the mark continuously uses the mark in commerce, consistently identifies the mark as a registered trademark and distinguishes it from the competition, the mark will often maintain its unique characteristics. For example, Kleenex® tissues continue to be marketed as a specific brand of tissue to set them apart from the competition. In addition, the term "corn flakes" may be used in conjunction with a specific brand name and thus remain distinctive such as Kellogg's® Corn Flakes. Alone, the term "corn flakes" remains generic but attaching a brand name to the term makes it distinctive. Another example is Neutrogena® hand cream. The term "hand cream" is generic, but when attached to a brand name, the term and brand name, in its entirety, qualifies as a trademark.

Q: What happens to a trademark once it is lost?
A:
If the trademark is lost due to abandonment or non-use it becomes available for a new owner to begin the registration process. If the trademark becomes generic and enters the public domain it becomes available for use by the general public.

11/27/2013

Law You Can Use is a consumer legal information column provided by the Ohio State Bar Association. This article was prepared by Youngstown attorney Rebecca M. Gerson, whose practice focuses on corporate, construction and trademark law.

Articles appearing in this column are intended to provide broad, general information about the law. Before applying this information to a specific legal problem, readers are urged to seek advice from an attorney.

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