Don’t Stop Now! Trademark Registration Is Just the Beginning

November 12, 2019

A trademark registration can often feel like the finish line of a long race, with the certificate of registration memorializing those new federal trademark rights. It might even be tempting to file the certificate away and call it a day. Yet a certificate of registration is not the end of the trademark race, just the beginning.

Trademark owners must maintain and enforce their trademark rights; if they do not, they risk losing those rights to abandonment. Knowing how abandonment might occur is therefore key to protecting trademark rights.

With only limited exceptions, a trademark owner’s rights hinge on a familiar concept: Use it or lose it. If the trademark owner does not appropriately use its mark, it risks abandoning its rights. Appropriate use of a trademark with goods requires that the mark be placed on the goods, the product packaging or a display associated with the goods, and that the goods be sold or transported in commerce. (See 15 U.S.C. § 1127.) For marks used in connection with services, an owner appropriately uses its mark when the mark is included in the sale or advertising of the services and the services are performed.

A trademark owner must also sufficiently use its trademark — negligible use of a trademark may lead to a finding of abandonment. Although there is no set level of what constitutes minimal use, cases illustrate the infrequent use that typically qualifies as minimal use (and thus abandonment of rights), such as a single sale of luggage in a two-year period or 89 sales of perfume bottles over 20 years. (See Momentum Luggage & Leisure Bags v. Jansport, Inc., decided July 23, 2001, in the U.S. District Court for the Southern District of New York; and La Societe Anonyme des Parfums Le Galion v. Jean Patou, Inc., decided in 1974 in the 2nd U.S. Circuit Court of Appeals.)

In addition to the use requirements, trademark owners must take commercially reasonable steps to enforce their trademark rights. Although owners are not required to enforce their rights against every potential infringer, they should not adopt a lackadaisical attitude toward enforcement. Trademark owners who fail to enforce their rights can face severe repercussions, including significantly narrowed rights or even a loss of rights.

For example, the court in one trademark infringement case found that the trademark owner had failed to adequately police the marketplace after the defendant introduced evidence of more than 70 trademark registrations for marks identical or highly similar to the owner’s, many of which were registered in connection with related goods. (See Amstar Corporation v. Domino’s Pizza, Inc., decided in 1980 in the 5th U.S. Circuit Court of Appeals.) As a result, the court held that the owner’s lack of enforcement significantly narrowed its rights in the mark. In another case, the Supreme Court held that a mark had become generic (and therefore not protectable) as the result of the trademark owner’s failure for 20 years to prevent use of the mark as the dictionary term for the good identified. (See Saxlehner v. Eisner & Mendelson Co., decided in 1900 in the U.S. Supreme Court.)

Trademark registration alone is not sufficient to preserve trademark rights. Instead, trademark owners are responsible for maintaining and protecting their trademark rights. If you have questions about your company’s trademark portfolio or enforcement policies, please consult the authors or another member of the McGuireWoods intellectual property team.