by Eric D. Morton
Business owners often believe that they have secured their trademark rights when they obtain a trademark registration. However, obtaining a registration is just a beginning. Trademark owners must take care how they continue to use their trademarks or they will lose their rights and ruin their brands.
Misuse of a trademark can weaken or destroy trademark rights
If a name or design/logo is not used in association with a service or a product, then it is not a trademark. One problem we encounter, particularly with service marks (a trademark for a service) is that an owner will stop using a mark in conjunction with the service for which it was used in the past. Marketing strategies change and websites are reconfigured.
Often such changes will result in a trademark not being associated with a product or service but in a free form manner on a webpage. That word, phrase or design that once designated a service becomes a slogan. Slogans and tag lines are not trademarks and can’t be protected.
Another problem is that a company will change the design of a logo trademark. If such a change is material, then it can cause a loss of trademark rights and a cancellation of a trademark registration. For word marks, some clever marketers will also add or subtract words for a trademark. This change can be a material change as to cause a loss of rights. Legally, changing a trademark diminishes the recognition by the public of the mark. Consumers don’t have the same strong attachment to the mark.
Protect your brand
To avoid a loss of trademark rights and/or a weakening of a company’s brand, companies should adhere to a few simple rules regarding use.
- Use consistently and prominently. Companies that have strong brands pick trademarks that are unique and then use them consistently. Again and again and again, the same way. Major corporations spend a lot of time and money selecting and developing trademarks. Once they start using a trademark, they use it the same way consistently. Use the trademark prominently. Don’t add or subtract elements or words from the trademark. The objective is to develop a strong association in the mind of the public between the trademark and the associated goods or services.
- Use for same products or services. Continuing to use a trademark for the same products or services over time builds the strength of the trademark. The longer a trademark is used as such, the more consumers will associate the trademark as representative of those products or services. Use the mark in close association with those goods and services in advertising. Make sure that a trademark is used clearly and prominently on the packaging of goods.
- Don’t make it into a slogan. Failing to prominently use a trademark in close association with goods or services will turn a trademark into a slogan or tag line – which are not trademarks.
- Document your use. Document your use of your trademark. Save webpages and copies of advertising. Take and save pictures of products and packaging with a trademark on them. Keep track of the dollars spent on advertising with each trademark. This is crucial evidence of use of a trademark and is invaluable in any legal action.
Strong trademarks and brands are created by unique designs or words that are consistently used by their owners. Trademark owners must constantly evaluate how they are using their brands. If you have any questions about the use of a brand, you can consult with an knowledgeable attorney.
Eric D. Morton is the principal attorney at Clear Sky Law Group. He can be reached at 760-722-6582, 510-566-0367, and emorton@clearskylaw.com.
