In this last installment of our three-part series on trademark protection, we explain the steps that are necessary to protect a business’ trademarks from competitors who seek to gain an unfair advantage through the use of an already established name. Businesses should be proactive in protecting their trademarks from potential infringers to prevent their marks from being “abandoned.”
“Abandonment” of a trademark occurs through (1) non-use for an extended time, or (2) by the development of the mark into a generic name for goods or services. A trademark has been abandoned if there is intent by the trademark holder not to resume use within a foreseeable future. Failing to offer your product in commerce for a period of years may be enough to create abandonment. However, small lulls in sales, and even temporary periods in which no sales occur are unlikely to qualify as abandonment.
Business owners in the manufacturing market must diligently protect their product’s name, especially if the product has a unique, un-generic name, prompting people to confuse the product’s name with the actual nature of the object.
For example, the commonly-known word, “thermos” was once a specific name given to the heat-vacuum cups produced by King-Seeley Thermos Company. Over time, the term “thermos” became synonymous with heat-preserving drink containers. As a result, the term become generic. This is because the name has become an indication of the nature and class of the article, rather than an indication of source.
If you are in fear of your business’ mark becoming generic, you are encouraged to speak to a trademark attorney in order to formulate a protection plan. This usually involves the issuance of cease and desist letters to potential infringers, and if necessary, litigation. For a creative approach, you could choose follow the path of Velcro and produce a music video urging people to distinguish between their product as “Velcro,” and others as “hook and loop.”
This article was written by Nezar Habhab, Law Clerk.