Protecting Your Creativity: Don’t Abandon Me!
I have now covered what a trademark is, how the public policy rationale influences the need for trademark infringement protection, the requirements for a mark to be registered, and the major benefits to registration. Today, I take up the final topic in this series on trademarks—duration.
Generally speaking, trademark protection, has no expiration date. Remember that the crux of trademark law is to cut down on consumer search costs by providing a quick and easy source identifier. Therefore, so long as the mark is being used in commerce, and serves as a source identifier, trademark protection will continue.
However, trademark protection can end if the mark is abandoned. A mark becomes abandoned when: 1) use of the mark is discontinued with intent not to resume use; 2) the mark becomes generic; or 3) the owner fails to employ adequate quality assurance protections.
Discontinuance with the intent to abandon does not require the mark to remain in use. Rather, simply having discussions about whether to begin reusing the mark may suffice to keep the mark active.
Furthermore, remember that a generic mark is not protectable. Sometimes, although a mark originally met the distinctiveness requirement, the mark becomes generic. For instance, one mark that has teetered on the brink of becoming generic is KLEENEX. After all, most people who need a tissue refer to it as a Kleenex regardless of whether it is a KLEENEX or some other brand. Therefore, it is possible that in the future KLEENEX could be deemed abandoned.
Lastly, the final way a mark is abandoned is if the owner of the mark does not adequately provide quality assurances. Again, because the crux of trademark law is to cut down on consumer search costs, if an owner allows the mark to be used in such a way that consumers cannot rely on the mark as a source identifier, the mark can be deemed abandoned. This form of abandonment tends to occur when a trademark owner licenses the use of the mark to another without providing any quality assurance measures.
And with that, this concludes the series on trademark law. The next post will begin the discussion on the third major form of intellectual property— Patents.
Steve Rensch and Zach Price
3850 E. Baseline Road, Suite 105
Mesa, AZ 85206