How can you lose your registered trademark?
Having a registered mark gives you a presumption of validity for your mark, but is it a way to stop ANYONE from using a similar mark in a way confusing to yours? There are several ways that a registered trademark can be invalidated or removed from the register, or have its rights abridged in another way.
There is a Prior User with a Similar Trademark
Earlier Registered Trademark
It is the Courts that decide the issue of confusion between two marks, and not the Trademark Examiner, so even if an Examiner lets your mark through, it may still be found to be confusing with a prior registered trademark.
Also, if you receive your registration for one set of goods and services, but over time the goods and services you are using with the mark expand, then it may be that you are now creating a confusing use with a registered trademark. This is why it’s helpful to monitor your mark for all the uses that you are putting it to, so you get the best picture of what other marks are as they arise (in the form of trademark applications), or as your uses change.
Earlier Unregistered Trademark
If there is a previous user of a trademark that is unregistered (commonly referred to as a common law trademark), for which rights are gained by use of the mark, even though you receive the registration of your trademark you cannot stop them from using the mark in the geographic areas that they have used the trademark, prior to your use. You may prevent them from expanding the use of that mark, however, and typically in this situation we have seen the common law mark holder change the name rather than live with abridged trademark naming rights. If they keep using the name, they will only be able to do so in the locations that they had previously sold.
Your Trademark Application is Invalid
If your application is invalid through misrepresentation or fraud, then the registered mark will also be. The main ways that your trademark validity will be challenged is by challenging the application and whether the marks was in use when you said it was.
Filing a Statement of Use
A Statement of Use is filed when you have started using your trademark, and lets you move the mark from 1(b) intent to use filing basis, to 1(a) use basis. First, the use must be carefully reviewed to be sure that all the goods and services associated with the trademark are in use, otherwise they should be removed (or kept in 1(b)). The USPTO website is notoriously difficult to use for this purpose, so please be careful when filing Statements of Use and removing previously filed goods and services (or placing them into a 1(b) intent to use filing basis from 1(a) use basis.).
Do you believe you are legally entitled to use the trademark?
The other question is where you are asked if you believe you are legally entitled to the trademark. If you are filing for an illegitimate purpose, such as a mark close to your competitors to cause confusion, or you are squatting on a mark, the mark may be challenged on this basis, that you did not believe you were legally entitled to the trademark.
You did not File Renewals of the Registered Trademark every 5 Years
To keep your federal registration valid, every five years you must file a renewal under section 8 of the Trademark Act which consists generally of a declaration that you have been using the trademark for the past five years, continuously. If you do not file this within the 5-year period after registration (or the 1-year extension or late period thereafter, with fee) then the trademark is purged from the Trademark Register. It’s the USPTO’s way of keeping dead wood out of the register and freeing up marks that have fallen out of use.
Failure to use the mark is also an avenue that others may challenge the mark in Court.
You did not police your mark
If others start using a mark similar to yours, and you do not do anything to stop it, then you may be prevented from trying to stop them from using the mark down the line, and therefore your trademark rights may be abridged or lost. The most effective way to prevent this (and keep up on your competition) is through trademark monitoring, a service we provide. Every month you receive a list of newly filed trademark applications that are similar to yours, in similar markets to yours, and you may choose to send those marks that are closest a cease and desist letter asking them to change their mark as it is confusing to yours.
Uncontrolled licensing is similar to the failure to police the mark, and can lead to cancellation of your mark or challenge by a third party. Licensing must be supervised with an agreement that sets out the terms and general check-ups on compliance with that agreement.
If you fear your trademark may be at risk, please contact us and we can provide some solutions to revive your registered mark.