How to Keep Your Trademark From Being Stolen
Now that you have a trademark or service mark, how do you keep it from being lost or stolen? Like other forms of intellectual property (IP), and like other forms of business property, trademarks and service marks must be protected.
Trademarks and service marks are different from other forms of intellectual property (IP) because they can be lost or stolen. In order to maintain the right to a trademark, you must fight to keep it.
Here's the difference: If your book goes out of print, you still maintain the copyright, and if you don't sell your marvelous patented product, you still have the patent. But if you stop using your trademark, or you allow someone else to use it without permission, you may not be able to demand that the other party stop using it.
If you can convince a judge that your trademark is viable, you may be able to get an injunction against someone using it without your permission. If you aren't using your name, or you can't show you are fighting to protect it, the damage may be done before you get to court.
First, a quick definition of trademarks and service marks. This type of IP is like a brand, an identifier. A trademark is for goods, while a service mark is for services. Think of the trademark on a pair of Nike shoes, as opposed to the service mark for H&R Block tax service. We'll use the term "trademark" in this article to mean both trademarks and service marks.
Here are 6 ways to protect your trademark from being lost or stolen:
1. Register your trademark. You can't protect your mark if you don't register it. Read more about how to register a trademark with the U.S. Patent and Trademark Office (USPTO), and be aware that you will probably need an attorney to help you with the registration process.
2. Make your mark strong, so you can more easily defend it in court. A recent article in Inc.com. explains that a descriptive name, like "Speedy Copy Service" is weak, while a suggestive name like Expedia or Fazoli's is stronger. A fanciful (made up) mark like Verizon or Kodak, or an arbitrary mark (real words taken out of context) like Apple or Blackberry, are more easily defended.
2. Use your trademark. Keep your trademark active to show you aren't abandoning it. Mark it with the (R) symbol. This is one of those instances of "use it or lose it." If you don't use your brand, in the way you said you were going to use it in your trademark application, you won't be able to defend it when someone else starts using it.
3. Keep checking; keep an eye on the competition. Use an online "alert" like Google Alerts, using your trademark as a keyword. If you have trademarked something that might be sold on the internet, track big retail websites, like Amazon, WalMart, or Overstock. You can also check the status of your trademark registration on the USPTO website, using the Trademark Status and Document Retrieval (TSDR) system (You will need your registration number to do this).
4 Fight infringement. Get an attorney.
Send a letter and if the person doesn't respond or doesn't stop, send a "cease and desist" notice. Keep fighting; failing to fight infringement is a common way businesses lose trademark rights.
5. Make sure your trademark is seen in a positive light. If your trademark is demeaned or degraded by negative publicity, you may have to fight to restore it. Be aware that there's a difference between opinion (reviews of a product or a book, for example) and attacks on a company or owner. Letting your trademark be degraded can mean you lose the ability to recover damages in a trademark violation lawsuit.
6. Update Filings. Be sure to keep your information up to date on the USPTO website, including both your correspondence address where mail and email are sent and your owner address. Many businesses are not aware that, to keep your trademark registration live, you must file specific maintenance documents with the USPTO and pay filing fees.
One important document is a declaration within 6 years after registration. Forms for filing the maintenance documents are at http://www.uspto.gov/teas.
In conclusion, as one expert says,
Not taking the necessary precautions to guard your small business against trademark infringement is like driving without insurance...an accident may not happen to you; if it does, the results are catastrophic.
You are responsible for enforcing your rights if you receive a registration, because the USPTO does not "police" the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.