Trademarks 101: Use it or Lose It – Eight Tips for Keeping Your Trademarks Strong

This post was written prior to our January 2017 merger, under our previous firm name, MacPherson Leslie & Tyerman LLP.

Trademark protection is an ongoing exercise. After applying to register your trademark, the simplest and most effective means of protecting it is through its proper use. Conversely, the easiest way to weaken, and even lose, your trademark is misuse. Proper use includes following best practices, both for how you use your trademark and for how you allow others to use your trademark. Here are some tips on how to keep your trademark strong:

What are the benefits of proper use?

1. Avoid Unintentional Abandonment.

Improper use can actually result in the loss of a trademark registration. Once your trademark has been registered for three years, any member of the public can request that the Registrar of Trademarks send you a demand that forces you to supply evidence of your use of the mark. If you are not using the mark as registered or cannot show use of the mark with the goods and/or services listed in your registration, your trademark registration may be cancelled.

2. Avoid Genericide.

Generic misuse may cause a distinctive trademark to succumb to “genericide,” meaning the public thinks that your trademark is the generic term for your goods/services (e.g. “zipper” or “thermos”). This becomes more of a threat as your brand becomes more successful and well-known.

3. Protect Distinctiveness.

Similar to genericide, if you allow other parties to use your trademark without a proper license in place, your trademark can cease to be distinctive of you as the source your goods/services. The result is that your trademark will be unenforceable or abandoned. This can happen through a failure to police your trademark or by not having a proper license in place with licensees.

4. Reduce Infringement.

A significant portion of trademark infringers are innocent and do not appreciate that what they are doing is unlawful. By providing proper notice of your trademark rights, you can communicate to potential infringers that your trademark is not available. When it comes to malicious infringers, using your trademark properly can communicate that you take your rights seriously and will enforce them in court if necessary.

How do I ensure I’m using my trademarks properly?

1. Put Someone in Charge and Create Branding Guidelines.

This tip is more about process, but having someone in your organization who is responsible for ensuring your trademarks are registered and used properly can help avoid common trademark pitfalls. This person might be part of your marketing or compliance team. Branding guidelines and internal monitoring of trademark use are another tool that can ensure consistent and proper use throughout your organization.

2. Tell the World It’s Your Trademark – Use the Notice Tools Available.

Properly placed notices can provide a great deal of protection, particularly when it comes to deterring innocent infringers who might not otherwise appreciate your rights without the notice.

  • Use the ™ symbol with your unregistered trademark and the ® symbol when registered. Always place it to the right of your trademark™. You can keep it looking clean by using superscript and smaller type.
  • Use a trademark legend at the end of your publications/website: “MyBrand® is a registered trademark of MyCompany Ltd.
  • Make your trademark stand out from its surroundings. Use different typefaces, capital letters, colors, sizes, and designs to make it clear that your trademark identifies your goods / services.
  • Ensure your trademark is affixed to the packaging of your goods and is used to advertise your services.

3. Pick a Trademark and Stick to it – Use Your Trademark Consistently.

Consistency is critical to avoid unintentional abandonment.

  • Use your trademark exactly as it appears in your trademark application/registration (this is particularly important for logos). This also includes using the trademark with the goods and/or services included in your registration.
  • If you wish to change your existing trademark or are offering new goods and/or services, contact your lawyer/trademark agent to consider filing a new trademark application (or amending an existing registration).
  • If you ever need to stop using your trademark, consult a trademark professional to ensure you have a valid reason for your non-use. Non-use for three years without a valid reason may result in abandonment.

4. Avoid Promoting the Genericide of Your Trademark.

As mentioned, genericide happens when your trademark becomes a generic term for your goods/services. To avoid this, treat your trademark as an adjective (brand name) that identifies a noun (your goods/services). Don’t use your trademark as a noun (single or plural) or a verb.

  • Incorrect (noun): Drink Starbucks
    Correct: Drink Starbucks® coffee or Drink Starbucks® brand coffee
  • Incorrect (verb): Xerox two copies of this
    Correct: Use the Xerox®photocopier to make two copies
  • Incorrect (noun): Get 25% off a Blackberry
    Correct: Get 25% off a bbsmartphone

5. License and Franchise Properly.

When you let someone else use your trademark with their goods and/or services, it is always advisable to obtain legal advice and a proper, written license agreement. A license agreement is a complicated document that needs to be customized for each situation but it should include control by the licensor over the goods and/or services and the requirement that the licensee provide public notice that the mark is being used under license.

6. Police Your Trademark.

Monitor the marketplace for infringing use of your trademark or confusingly similar marks and take prompt action. If you think someone is infringing on your trademark, notify your lawyer or trademark agent immediately so that he or she can advise you on your options.

7. Keep Records.

You never know when you might need to enforce your trademarks and having evidence on hand can be very helpful. Keep specimens of use of your trademark, advertising budgets and invoices, and other evidence of how well-known your trademark has become.

8. Be Aware of Special Circumstances.

There are certain circumstances in which you may need to take special steps to ensure proper use.

  • Family of Corporations – It often goes unappreciated in Canada that trademark licenses are necessary for related corporate entities. Dilution can occur when you fail to have a license agreement in place from the entity that owns the marks to all of the entities that might use the marks and do not employ public notices that the mark is being used under license.
  • Non-Traditional Trademarks – The rise of non-traditional trademarks, such as sounds and smells, present new challenges for proper use. For example, how does one put a ™ symbol on a smell? Brand owners who employ trademarks beyond standard word and design marks should seek advice from a trademark professional on how to maintain best use.

Key Takeaway: Strong trademark protection requires on-going work that includes proper use and monitoring

Brand owners that follow these tips can keep their trademarks strong, experience fewer infringement problems and increase the likelihood of a favorable outcome in a trademark dispute.

About the Trademarks 101 Series

MLT Aikins’s Trademarks 101 is a series of posts about trademark law designed to provide a plain-language overview of trademark law for businesses, marketing and adverting professionals, and in-house counsel. Trademarks 101 comes from the MLT Aikins trademarks team: Chris Woodland and Kursty Bansley. These posts are intended to be a supplement to – not a replacement for – the advice of an experienced trademark professional.

The five posts in this series include:

  1. Start Smart by Developing a Strong Trademark
  2. Pre-screening and Searches – Ensuring Your Trademark is Available
  3. Five Reasons to Register Your Trademark
  4. Use it or Lose It – Eight Tips for Keeping Your Trademarks Strong
  5. Going Global – Protecting Your Trademark Abroad

Note: This article is of a general nature only and is not exhaustive of all possible legal rights or remedies. In addition, laws may change over time and should be interpreted only in the context of particular circumstances such that these materials are not intended to be relied upon or taken as legal advice or opinion. Readers should consult a legal professional for specific advice in any particular situation.