Most people understand that registering a trademark is not something quick, simple, and easy to do. Filing an application might be, but the actual trademark registration process takes quite a while and there are many factors that are to be considered when this application is assigned to a trademark office examiner.
The fact that you went through this whole process and successfully registered your trademark is definitely an accomplishment and moves you one step forward in the business world. Having your trademark registered gives you protection, as trademark rights are granted when registering the trademark through the corresponding government offices. This will protect you from third parties wanting to use your trademark or a similar one for the same products and/or services that you are offering to the public.
However, what if something major happened and now you have to change course in your business? Or maybe things didn’t go as planned and you have now decided to sell a different product? Or maybe your business grew tremendously and the trademark you’ve registered is in everyone’s mind, but up to the point where the public thinks your trademark is the actual name of the product or service you are selling?
I’ll answer these questions in the following paragraphs and explain why it is important to take this into consideration.
Understanding why a trademark is necessary
Before answering the questions mentioned above, we need to explain the necessity of registering your trademark.
Arguably, a trademark is the most important intangible of a business. It is what remains in the minds of consumers even when the products have been consumed. The importance of the brand lies in leaving an indelible mark in the minds of customers, a mark that is unmistakable, a memorable mark that allows them to consume over and over again thanks to the differentiation it achieves against its competitors.
It’s time to renew my trademark…
Once a trademark is registered, in most (if not all) countries, the trademark will be valid for 10 years before you must file for its renewal. If you have made it to 10 years using this trademark, then that means your business is on the right track.
Usually, filing for a trademark renewal is actually a pretty simple process. You must meet the deadlines and pay the corresponding fees, and then you’re good to go. However, there are some factors to be taken into consideration when doing so, or even before filing the renewal. This is where we come to the questions mentioned earlier:
What if something major happened and now you have to change course in your business?
We have actually seen this happen quite a few times, even more so when the pandemic started. This situation was terrible for companies, especially for start-ups. For example, there have been companies who were in the entertainment industry and now, due to COVID-19, they had to either shut down everything or change industries in order to keep the business afloat.
This is one of the reasons why people abandon their trademarks and why it is necessary: the name that originally identified the product or service they offered to the public does not represent this product or service anymore.
What if the public thinks our trademark is the name of an actual product?
This is something that has happened quite frequently and surely you’ve noticed this as well. When you start your business and register your trademark, you don’t really think about it because it doesn’t make much sense. A product or service already has its own word to describe it, so why would this be an issue for my trademark?
Well, let’s see why with some examples:
What comes to mind when you think or hear the word “Aspirin”? The first thing that you might think of is “medication or painkiller”. This term was actually created in 1987 and originally trademarked by Bayer AG, a German multinational pharmaceutical company.
The name means “pain relief, speed, reliability, and tolerability,” according to Bayer. Aspirin comes from “acetyl” and Spirsäure, a German name for salicylic acid. With time, this trademark became generic and was finally revoked in 1917.
This name was created by George Edward Pendray for his employer Westinghouse Electric in 1940. It represented the first automatic washing machine that could be wall-mounted. It was last registered to Westinghouse in 1952 and has since expired as a trademark, according to USPTO.gov.
All in all, some trademarks go through this same unfortunate situation as time passes. This is what we call when a trademark becomes “generic”.
What is ironic is that the more successful the trademark owner’s business is, the more likely it is that a trademark will become generic. This causes the trademark owner to lose the exclusive right to use and protect the trademark. If this happens to you, please know that it is very likely that you will lose your trademark and it is time to abandon it.
What if someone files a Cancellation Petition against my trademark?
In some cases, some small businesses register their trademark and use it but then for some reason stops growing and eventually are not active anymore. Sometimes however, these businesses are just at a “stand-by” point and are looking to re-launch with new ideas, a new marketing strategy, etc., but still want to keep their trademark.
Now, it’s important to note that once a trademark is registered, it is valid for ten years. But, what if during the 2nd year, the situation mentioned above happens? If another company that wants to use the trademark notices that you haven’t been using your trademark for a while, they can file a Cancellation Petition against your trademark.
If you do not have proof that you are actively using the trademark, then the Cancellation Petition could be accepted. So, if you are in the process of re-launching your business, then go for it, but you might need a new trademark.
We’ve gone over some reasons about when and why you should abandon your trademark. It’s important to be prepared and take all these things into consideration when looking to file for a trademark.
If you have any questions or concerns about trademark registration, please contact us and we will definitely help you!
Author: Solange Rámirez, Trademark Consultant @ iGERENT.com