6 Ways You Can Lose a Trademark

Trademarks are one of the longest-lasting types of intellectual property you can have. That being said, you can still lose them if you’re not careful, and there are a few ways this can happen. To keep control of your IP, you need to be aware of how you can lose it. 

If you’re not well-informed or experienced with IP protections, the attorneys at Emerson Thomson Bennett can help. We know how you can potentially lose your trademarks and how we can keep that from happening. For more information, contact our trademark attorneys.

How Can You Lose A Trademark?

You can lose a trademark in several ways. It is often due to actions or inactions by you rather than an external source. These ways include:

1. Non-use: You can’t keep a trademark that you don’t use. In the United States, if you fail to use a trademark in any way for three consecutive years, the United States Patent and Trademark Office (USPTO) will consider it abandoned. Renewing your trademark is not considered using it.
2. Genericide: It is rare but far from impossible for a product to become the generic name for goods and services. If this happens, you can lose your trademark protection. An example of this is Escalator. Escalator was originally a trademark, but the name became synonymous with every form of the device, so the company lost the escalator trademark. There is no way to get a trademark back after losing it to genericide.
3. Failure to Renew: Trademarks need to be renewed between the 5th and 6th year after registration. Then you need to renew it every ten years. Failure to file the necessary renewal documents and fees can cause you to lose your trademark.
4. Improper Licensing or Assignment: If a trademark is licensed without adequate quality control or if it’s assigned to another entity but the related goodwill is not transferred with it, the trademark could be invalidated.
5. Failure to Enforce: If you have a trademark, you have to enforce it. This means that if there are entities infringing on your trademark, you have to file a cease-and-desist at least. If they do not comply, you have to file a lawsuit to enforce your trademark, or you will lose it.
6. Federal Registration Cancellation: If you have been given a trademark that another claims to be infringing on theirs or is legally untenable, they can file with the USPTO. The USPTO will review the petition, and if it finds the petition to be true, it can cancel the trademark.

Can You Get Back A Lost Trademark?

If you lose your trademark, it’s not impossible to get it back. There are options, but they are costly both in terms of time and money. How you can get it back depends completely on how you lost it in the first place.

1. Filing a Petition to Revive an Abandoned Trademark: If you unintentionally abandoned your trademark or have found a new use for it, you can file for a revival within 60 days of the Notice of Abandonment. Our attorneys can help you prove that the abandonment of the trademark was unintentional and that you took prompt action to correct the issue.
2. Filing a New Application: If reviving the original trademark is not possible, you can apply for a new trademark registration. If you have prior usage of the mark, you can claim this in your new application, which might give you an advantage in getting it approved, assuming it is still available.
3. Petition to Revive for Lapsed Registrations: If your trademark registration lapsed due to a failure to renew, you might be able to file a Petition to Revive. To do this, our attorneys can demonstrate that the registration lapse was unintentional and you took immediate action upon realizing the mistake. 
4. Purchase the Trademark: In the case that someone else files after you have let it go, you will likely have to purchase it from them. They have rightly and correctly filed for it, so the only way to get it back is to pay them what they think it’s worth after negotiations. 

Rather than have to go through all of these hoops and potentially waste the money you need, have a law firm look over and maintain your trademarks so they are not lost in the first place.

Contact the Trademark Attorneys at Emerson Thomson Bennett

It’s easy to abandon your trademark without even meaning to. The more trademarks you have, the more complicated it will get, and the more time and money you will lose if you ever lose one of them. In the worst-case scenario, if you don’t renew a trademark you’re actively using, someone can steal right from under you and try to extort you. Don’t ever put yourself in that position.

Our trademark attorneys can secure and renew your trademarks at regular intervals so this doesn’t happen. If you need help enforcing your trademark to keep it, we can do the legal work for you. For more information, schedule a consultation with Emerson Thomson Bennett today.