A person becomes the owner of a trademark as soon as they start using their trademark as they offer their goods or services for sale in the marketplace. Basically, a person establishes their rights to their trademark when they make use of it.
However, the rights established by mere use are limited. Also, they are only good in the geographic area in which the owner sells their products, whether they are goods or services.
If a person wants stronger, nationwide, and possibly international rights in connection with their trademark, they should apply for trademark registration with the U.S. Patent and Trademark Office (USPTO). The law does not mandate registration, but registration provides broader rights and more effective ways in which to protect a trademark.
How Can I Lose My Trademark Rights?
There are several ways in which a person or a company can lose ownership rights of a trademark:
- The trademark may be abandoned by the trademark owner;
- The trademark may be diluted because others use it or use similar trademarks or trade names that confuse the public;
- The trademark rights may be severely infringed upon by another person or company.
Once a person has registered their trademark, they are legally allowed to use the registered trademark symbol ® in their communications and marketing. However, a person still must take action to protect their trademark from infringement and dilution when it is threatened by others. The USPTO does not protect trademarks. It is up to the owner to do that.
One of the first things an owner needs to do is to monitor registration filings with the USPTO. When a person finds applications for the registration of trademarks that seem too similar to the person’s own trademark, they need to oppose the offending registration application.
The owner must also act if they discover that another person or company is using their trademark or tradename or ones that are confusingly similar to, if not the same as, their own.
They should first send a cease and desist letter to the offending person or company. This is a letter that asks the offender to stop making use of the owner’s trademark or tradename.
The letter should be sent as soon as possible after the owner learns of the infringement. If it is not effective in stopping the infringement, the owner has a right to file a lawsuit in federal court to achieve that goal.
What Is Dilution of a Trademark?
Dilution refers to the use of a trademark or trade name in commerce that is so similar to a famous trademark that it confuses the consuming public’s perception of the famous trademark.
For example, a sportswear company might use a type of checkmark as a logo on its sports shoes and other athletic wear that could dilute the distinctive trademarks of Nike. Or a company might put a similar checkmark on completely different kinds of products, which could lead consumers to wonder if Nike had gone into a new line of business.
There are two main kinds of harm in dilution of trademark, as follows:
- Blurring: Dilution by blurring takes place when the distinctiveness of a famous mark is reduced or harmed by association with another similar trademark or trade name;
- Tarnishment: Tarnishment happens when the reputation associated with a famous trademark is harmed, or “tarnished,” through association with another trademark or trade name that is similar.
How Do I Prevent Dilution of a Trademark?
As noted above, the most effective way to prevent loss of trademark rights through dilution is to stay informed of the use of the trademark by others and prevent any misuse of the trademark by competitors. For example, a person should monitor trademark registration applications and oppose any that seek registration of the same or similar trademarks.
The Federal Trademark Dilution Act gives the owners of trademarks and trade names the right to file a lawsuit to protect famous marks and names from use that is not authorized. An owner can sue to prevent dilution, both actual and likely.
The owner of a famous mark may seek an injunction against another person or company that uses a mark or trade name in commerce that is likely to cause dilution of their famous mark. The owner does not have to prove that confusion has, in fact, occurred or that they have suffered economic injury. An injunction would be a court order directing the offender to stop infringing on the protected trademark or tradename.
A mark is considered famous if it is widely recognized by the general U.S. public. Factors for determining whether a trademark has the required degree of recognition include the following:
- The length of time, extent, and geographic reach of advertising and publicity of the trademark;
- The volume and geographic extent of sales of goods or services offered under the trademark;
- The extent of actual recognition of the mark.
To succeed with a lawsuit for dilution, the trademark must have established its fame before the use of the allegedly diluting mark or trade name began.
How Can I Lose My Trademark Rights Because of Someone Else’s Infringement?
With trademark rights, an owner has to be willing to stop other people and companies from committing infringement. In some cases, someone may use a person’s trademark without their permission, and the owner does not act to prevent this in a timely fashion. If this is the case, then the courts may infer that the owner does not actually own the rights to the trademark or, for whatever reason, does not wish to enforce their rights any longer.
An owner must engage in trademark litigation to protect their exclusive rights to use their trademark and trade name.
As with many other kinds of lawsuits, if a person does not file their claim of trademark infringement within the time period set by the statute of limitations, the person loses the right to sue for that specific instance of trademark infringement.
What Can I Do To Preserve My Trademark Rights After Someone Else Has Infringed on Them?
The best thing that a person can do to ensure that they keep their trademark rights is to stop people from engaging in behavior that infringes upon their rights. By taking steps to stop others who are infringing on their trademark rights, a person demonstrates to the courts that they are the rightful owner of those rights and continues to have an interest in preserving those rights.
Do I Need a Trademark Lawyer?
Once trademark rights are lost, it is almost impossible to regain them. If you think that your trademark is at risk of being diluted or that someone has infringed upon your rights in a trademark, you want to consult a trademark lawyer.
LegalMatch.com can connect you to a trademark lawyer who will be able to tell you if your trademark is at risk of being diluted. They can also assist you if it appears that a person or a company has illegally infringed upon your rights to a trademark.
In addition, a trademark lawyer can help you put an end to dilution or infringement, whether it requires merely a cease-and-desist letter to the responsible parties or a court order halting the diluting or infringing actions.
