All intellectual property has some form of on-going maintenance needs to maximize the legal strength of any particular items such as a patent, trademark, copyright, trade secret, various forms of proprietary information, etc.  This is where the intellectual property liaison comes into play as being an individual who is involved with your technology on a daily basis to ensure all of the right activities are accomplished.  See “General Intellectual Property” under the “Portfolios” page for more information on the intellectual property liaison tasks. 

 

Looking specifically to trademarks, maintenance includes protecting yourself against the various attacks that can be made against the trademark during infringement litigation that challenge the trademark’s validity.

 

When the Trademark is filed care should be taken to have complete candor with the Trademark Office to avoid any charge of misrepresentation to the Office. 

 

Once registered, section 8 and 15 affidavits need to be filed at 5-6 years after registration, and 10-year renewals need to be paid.  Normally your patent attorney will docket these forms and fees to be paid and send you a reminder; however, it would be wise as a backup for you to do the same, just in case something should happen over the years, with ownership transfers, etc.

 

The primary requirement for a trademark is to keep the mark in “use” in interstate commerce continuously to avoid the charge of abandonment.  There are sub categories of non-use that need to be paid attention to which include;

 

Non-use, abandonment is presumed after 3 years of non-use, with evidence to show no intent to re-use the mark.  In other words use it or lose it. 

 

Naked licensing, licensing the marks without adequate controls to maintain mark validity, such as letting the marks go generic (used as a noun), confusion as to source or origin, goods and services quality control, etc.

 

Gross assignments, failure to maintain “goodwill” of the mark if the assignment is for the name only without the customer good will associated with it. 

 

Failure to police infringers, which result in the erosion of the mark’s distinction in the marketplace, note that you don’t have to sue every infringer on the block.  A reasonableness standard applies wherein the policing activity should serve to maintain the marks distinctiveness and association with goods and services. 

 

Generic use of the mark, use of the mark to describe the goods or services with which it is associated as opposed to the correct use of the mark in indicating origin of the goods or services.  Examples of marks becoming generic are cellophane, HOG, walking fingers, shredded wheat, aspirin, and thermos to name a few. 

 

Always use the mark as an adjective (descriptive of the origin of the goods and services) and not as a noun (to name the goods themselves).  Proper use of a trademark is to state for example; KLEENEX ® brand tissues, not KLEENEX alone. 

 

Proper notice every time the mark appears to the public, use of the ® as a suffix for federally registered marks and use of ™ as a suffix for pending federal registrations and unregistered (common law) marks.  Misuse of the ® when not federally registered can cause invalidation of the mark. 

 

Alteration of the associated goods or services, remember your federal registration only covers the goods and services that the mark is registered with.  With the passage of time is has happened in the past that the mark is being used in commerce with other goods and services than it is registered with, in this case the unregistered goods and services your rights reduce to common law for the mark with the unregistered goods and services. 

 

Alteration of the mark itself, again over time a registered mark can be inadvertently altered and promoted as such.  An example would be taking a three-word slogan and changing one or two of the words, resulting in loss of federal registration and reducing the altered mark to common law rights.

 

Be aware of anti trust risks, especially over time as companies are bought and sold, inadvertent monopolies can develop and expose you to the charge of “trademark misuse”.   See “Anti trust” under “Intellectual Property Protection” for more detail.

 

Always keep an eye out for new trademark publications that you may want to oppose.   It is better for you to know about it sooner and assess the potential for harm against your trademark goodwill, that to have an infringer surprise you with it later.

 

Be careful that no implied representations are made to any potential or actual infringer that somehow permission is given, to say use the mark in a naked sense or without maintaining controls over the marks association with its goods and services.