If Maintained, Trademarks Can Last Forever

Trademarks are likely your most valuable business asset, and with some basic care, they will last forever. For example, Stella Artois claims continuous use of its mark since 1366. Lowenbrau claims to have continuously used its trademark from 1383. The Bass red triangle logo was the first registered trademark in the UK in 1875. These marks are still used today. The oldest U.S. registered trademark still in use was registered in the United States on 27 May, 1884, by the J.P. Tolman Company (now Samson Rope Technologies, Inc.), a rope-making company. Coca-Cola was registered in 1893. The Ford script trademark was registered in 1909.

Continuous Use is Required

All these trademarks have one common characteristic. They were continuously used. In the United States, trademark rights are created by use. Any word, phrase, symbol, design, or a combination of these that identifies your goods or services can be a trademark.

But you must properly use your trademark. Trademarks must always be used as adjectives. For example, Bass Ale or Sampson ropes. They never should be used a nouns or adjectives. If used improperly, they can lose their ability to be trademarks, which is referred to as genericized. Genericized happens when the consuming public begins to use the trademark as a common word for the product or service your providing. This has happened to many famous valuable marks.

Cellophane was once a valuable US trademark. It was used improperly and lost because it became a generic term for plastic wrap. To use as an adjective, it would be Cellophane plastic wrap. But it was used improperly as a noun, “wrap it in cellophane,” or a verb, “I cellophaned the leftovers.” Other examples of genericized trademarks are escalator, trampoline, and thermos.

 

Police Your Trademarks.

You must police your trademark. Your trademark is infringed when someone else uses it, or something similar, that creates consumer confusion. Consumer confusion occurs when it’s used on related goods or services.

You don’t want others getting close to your trademark because it will weaken it. Consumers will think that they are buying from you, when in fact, they’re buying from the infringer. Policing your trademark will inform you of others, and many times, a letter requesting they stop will be effective.

Deadlines Must be Met for Federal Registrations

Federally registered trademarks have two important deadlines. The first is between the fifth and six years after a trademark is issued. You must file an affidavit stating you are using your trademark and submit a sample of how it’s being used. The rules for showing use are complicated. If you miss this date or fail to follow these rules, your trademark is canceled.

During this time you can also file a Declaration of Incontestability which provides important benefits that make your trademark stronger. See my article describing these benefits.

The next deadline occurs between the nineth and tenth years after a trademark is issued. You must renew your trademark between this period and then every 10 years after, or your trademark will be canceled.

The Takeaway

Trademarks can be, and probably are, your most valuable business asset. If you take care of them they will grow in value as your business grows. It’s best if you appreciate how valuable they are and incorporate these maintenance steps into your business processes.  You buy insurance to protect your assets and your business value. A good system is your insurance. I suggest that you adopt the RCP System that I’ve used for more than 30 years to protect client’s IP.

If you would like to talk about the RCP system or your trademarks, please give me a call or schedule a meeting.

 

Bill Honaker, The IP Guy

About the Author:

Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the forthcoming book, Invisible Assets – How to Maximize the Hidden Value in Your Business. To download a sample chapter, click here.

To get answers to your questions click here to schedule a time to talk, email Bill@IPGuy.com, or give him a call at 248-318-7015.

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