Sunday, May 23, 2010

Trademark Enforcement - Protect Your Brand by Cheryl L. Hodgson, J.D.

The path to a great brand is littered with casualties. Many of these casualties are members of the "once were, now has been" brands. Brands are lost because their owners register their trademark and forget about it, believing they are off the hook. To build a lucrative brand that will not become a "has been" you must protect yourself by enforcing your trademark from brand bandits that are ready and eager to benefit from your success. Registration is the beginning. Enforcement in the digital age is an ongoing process of awareness and communication, both within an organization and with expert IP counsel on your team.

Enforcement means being aware. It is important that you understand and are mindful of what is happening in the marketplace in which your trademarks exist. This includes your own use, use by licensees, distributors and affiliates, as well as unrelated third parties. It also means a proactive stance towards managing risks that can weaken value or in some cases result in a complete loss of rights.

The registration of your trademark is only the beginning of the brand protection process. The act of enforcement also includes making sure that federal registrations are maintained. The Trademark Office requires periodic filings or they will cancel your registrations. Also, trademark owners must "police" their marks against unauthorized use or they risk losing valuable rights. It is important to teach authorized users to use the marks correctly as well as monitor their use. Many trademarks have been lost through neglect and failure to take simple steps to eliminate infringers.

A vital step in the trademark process is between the fifth and sixth year following registration. You must file affidavits showing that you are still using the marks in commerce or the registration will be canceled! Once canceled, others can file and take your rights. Additionally, the mark must be renewed at the end of ten years. A great example of the importance of trademark maintenance involves the use of CINDERELLA on peanut butter. It had been in use by the applicant since 1895, but the registration was allowed to lapse in 2001. The company re-filed to obtain the trademark only to be shot down and told they could not have the registration. The new application was denied on the grounds that it would be confused with a Disney registration for candy, chocolate, pretzels, and bread. This is a great example of how not paying attention, and/or not engaging trusted counsel as part of your team can result in a loss of rights.

Enforcing your mark also means "risk management." There are always risks in any business-some large, some small. In the case of trademarks, the greatest risk comes not in the form of a single large infringer, but in the owner's cumulative failure to take action against smaller, more numerous offenders. Left unchecked, small offenders can collectively result in the complete loss of rights. In short, take care of the small issues as they arise, the big ones will in turn take care of themselves.

Copyright 2008 Hodgson Law Group
Cheryl L. Hodgson, J.D.
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