Trademarks rights must be maintained through actual use of the
trademark. These rights will diminish over time if a mark is not
actively used. In the case of a trademark registration, failure to
actively use the mark, or to enforce the registration in the event of
infringement, may also expose the registration itself to removal from
the register after a certain period of time.
All
jurisdictions with a mature trademark registration system provide a
mechanism for removal in the event of such non use, which is usually a
period of either three or five years. The intention to use a trade mark
can be proven by a wide range of acts as shown in the Wooly Bull and
Ashton v Harlee cases.
In the US, failure to use a
trademark for this period of time, aside from the corresponding impact
on product quality, will result in abandonment of the mark, whereby any
party may use the mark. An abandoned mark is not irrevocably in the
public domain, but may instead be re-registered by any party which has
re-established exclusive and active use, including the original mark
owner. Further, if a court rules that a trademark has become "generic"
through common use (such that the mark no longer performs the essential
trademark function and the average consumer no longer considers that
exclusive rights attach to it), the corresponding registration may also
be ruled invalid.
For example, the Bayer company's
trademark "Aspirin" has been ruled generic in the United States, so
other companies may use that name for acetylsalicylic acid as well
(although it is still a trademark in Canada). Xerox for copiers and
Band-Aid for adhesive bandages are both trademarks which are at risk of
succumbing to genericide, which the respective trademark owners
actively seek to prevent. In order to prevent marks becoming generic,
trademark owners often contact those who appear to be using the
trademark incorrectly, from web page authors to dictionary editors, and
request that they cease the improper usage. The proper use of a
trademark means using the mark as an adjective, not as a noun or a verb
[3] [4] [5], though for certain trademarks, use as nouns and, less
commonly, verbs is common. For example, Adobe sent e-mails to many web
authors using the term "photoshopped" telling them that they should
only use the term "modified by Adobe® Photoshop® software." Xerox has
also purchased print advertisements declaring that you cannot "xerox" a
document, but you can copy it on a Xerox Brand copying machine. Such
efforts may or may not be successful in preventing genericism in the
long run, which depends less on the mark owner's efforts and more on
how the public actually perceives and uses the mark. In fact, legally
it is more important that the trademark holder visibly and actively
seems to attempt to prevent its trademark from becoming generic,
regardless of real success.
Related Readings:
What does a trademark do?
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. The period of protection varies, but a trademark can be renewed indefinitely beyond the time limit on payment of additional fees.
read on...
Establishing trademark rights - use and registration
Trademark rights, such as the right to exclusive use of a
trademark, can be established through actual use in the marketplace or
registration with a trade marks office. In general, such rights will only apply in the jurisdiction where the trademark is used or
registered, a quality which is sometimes known as territoriality.
However, there are a range of international trademark laws and systems
which facilitate the protection of trademarks around the world.
read on...
Trademark
A trademark (Commonwealth English: trade mark)[1] is a distinctive
sign of some kind which is used by a business to identify itself and
its products and services to consumers, and to set the business and its
products or services apart from those of other businesses. A trademark
is a type of intellectual property, and in particular, a type of
industrial property.
read on...
Maintaining trademark rights
Trademarks rights must be maintained through actual use of the
trademark. These rights will diminish over time if a mark is not
actively used. In the case of a trademark registration, failure to
actively use the mark, or to enforce the registration in the event of
infringement, may also expose the registration itself to removal from
the register after a certain period of time.
read on...
Enforcing Trademark Rights
The extent to which a trademark owner may prevent unauthorized use
of trademarks which are the same as or similar to its trademark depends
on various factors such as whether its trademark is registered, the
similarity of the trademarks involved, the similarity of the products
and/or services involved, and whether the owner’s trademark is well
known.
read on...
Trademark - Consumer protection and confusion
One of the public policy objectives given for trademark law is
consumer protection, that is, to prevent the public from being misled
as to the origin or quality of a product or service. A trademark owner
also uses trademark law to prevent unauthorised third party use of a
mark which is identical to the owner’s mark, or which is so similar
that use of the other party’s mark would result in a likelihood of
confusion.
read on...
Comparing trademark with patents, designs and copyright
While trademark law seeks to protect indications of the commercial
source of products or services, patent law generally seeks to protect
new and useful inventions, and registered designs law generally seeks
to protect the look or appearance of a manufactured article.
Trademarks, patents and designs collectively form a subset of
intellectual property known as industrial property, because they are
often created and used in an industrial or commercial context.
read on...
Trademarks and Domain Names
The advent of the Domain Name System has led to attempts by
trademark holders to enforce their rights over domain names that are
similar or identical to their existing trademarks, particularly by
seeking control over the domain names at issue. As with dilution
protection, enforcing trademark rights over domain name owners involves
protecting a trademark outside the obvious context of its consumer
market, because domain names are global and not limited by goods or
service.
read on...
Small Businesses with BIG NAMES: Protect Your Trademarks and Reap the Rewards
You’re a small business owner with a hot new product or service and you’re deciding what to name it. Perhaps you’ve even hired a graphic designer to create a flashy logo to go with it. You may have ruled out trademark registration as too expensive or even unnecessary because you only plan to sell in your local area.
read on...
Trademark: Do I Need One for My Business Name and Logo?
Wondering if a trademark is important to you as a business owner? Let's start with the basics. A trademark is a word, phrase, symbol, or logo that distinguishes and identifies the source of goods of one company or person from another.
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The Role of Trademarks in Marketing
Peter Drucker, a well-known management guru, said that a “business enterprise has two basic functions: marketing and innovation. Marketing and innovation produce results; all the rest are costs.” Intellectual property plays a role in both of these functions, and specifically trademarks are of primary importance in the marketing process
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