By: Kennington Groff
Don’t trust your brand to just any lawyer – both enforcing and not enforcing your company’s trademark rights can damage your brand.
When you move to enforce your trademark rights, you are putting your trademark in the line-of-fire, where it will very likely be attacked by the opposing party. A trademark can be attacked in a variety of ways, most frequently through arguments that the mark is (1) generic, (2) has been abandoned for non-use, (3) misrepresentation to the Trademark Office, and (4) fair use.
In Haughton Elevator Co v. Seeberger, 85 U.S.P.Q. 80 (1950) trademark rights were lost because the mark ESCALATOR had become generic and therefore lost its trademark status. The court found that Otis Elevator failed to protect the ESCALATOR mark and it became known to the general public as the name for a moving stairway. ESCALATOR was no longer used to identify the moving stairways created by its original founder, Otis Elevator, but rather it became the word to identify all moving stairways. Now anyone can use the word ESCALATOR to describe a moving stairway. Additionally, several of these famous brands lost their trademark rights due to genericide: Aspirin, Trampoline, Thermos, Dry Ice, Laundromat, App Store, Yo-Yo and Zipper.
Further, marks can become abandoned if the owner stops using the mark. Even a short period of nonuse may lead to abandonment in certain circumstances so its important to seek the advise of a lawyer before you even temporarily stop using a mark.
Trademark law permits others to use your mark if that use qualifies as fair use. Permitted uses include allowing a person to use a mark in 1) a non-trademark, descriptive sense to describe a trademark holders goods and/or services and 2) to refer to a trademark owner or its good and/or services. The owner of trademark rights must police this carefully in order to not lose their rights and prevent infringement.
Lastly, any misrepresentation to the Trademark Office, including fraud or misrepresented facts, when applying to register your mark can result in a loss of trademark rights.
This should make clear to everyone that only experienced (truly experienced) trademark lawyers should be used to enforce your trademark rights. As discussed elsewhere, many lawyers claim to have trademark law expertise, but they are actually novices with little to no experience. Make sure you hire a qualified trademark lawyer to brand your brand.
At Lilenfeld PC, we work we can work with you to protect your company’s brand and trademark by getting an opposing company to stop using a deceptive comparative advertisement. We also can defend your comparative advertisement and trademark against another company if you received a demand letter or if a lawsuit was filed against you. If you have any questions or would like a consultation, please contact us at (404) 201-2520.