Protecting Trademarks and Servicemarks

Companies increasingly use trademarks and servicemarks to protect their brands and obtain a competitive advantage in the marketplace. Registration with the United States Patent and Trademark Office (USPTO) provides the trademark or servicemark owner numerous benefits such as constructive notice nationwide of the mark owner’s claim of ownership of the mark, a legal presumption of nationwide ownership of the mark, the exclusive right to use the mark on or in connection with the goods or services stated in the registration, and jurisdiction in federal courts. In addition, registration with the USPTO allows the trademark or servicemark owner to use the designation® to reference its mark. Without a registration from the USPTO, the trademark or servicemark owner can only use the designations™ (for trademarks) and^SM (for servicemarks) to reference its mark.

A common misconception is that companies need take no further steps upon obtaining a federal registration to protect their federally registered marks, whereas, in reality, more needs to be done. This article outlines steps that owners of federal trademark and servicemark registrations can take to protect their marks.

Maintain Continuous Use of the Mark
To obtain a federal registration, applicants must use their marks in commerce in connection with the items listed in the application. To maintain the registration, mark owners must continue commercial use of their marks. For trademarks, this requires continued placement of the mark in or on the goods, containers, or labels associated with the listed goods. For servicemarks, this requires continued use or display of the mark in selling or advertising the listed services. If mark owners cease using their marks in the U.S. for a sufficient period of time and intend not to resume use, abandonment and loss of the registration may result.

If mark owners cease using their marks in the U.S. for a sufficient period of time but intend to resume use, a court will consider the reasonableness of the length of non-use in determining whether abandonment and loss of the registration has occurred. In general, lack of use for more than three years is evidence of abandonment. The reasonableness of the length of non-use depends on the industry and the circumstances encompassing use of the mark. For example, an appellate court excused a canned fish company’s non-use over a three-year period because of the unprofitability of importing fish into the U.S. during that period. The court considered the company’s intent to resume use of the trademark and the company’s actual resumption of use of the trademark when profits could be made again.

If a period of non-use does result in abandonment of the mark, subsequent use of the mark cannot revive the original rights in the mark because the subsequent use “represents a new and separate use with a new date of first use.” Dates of first use become important when a mark owner wishes to challenge an intervening third party’s use of the mark.

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Moreover, if mark owners cease using their registered marks in the U.S. for a sufficient period of time, they will be unable to satisfy the USPTO’s requirement that the mark be used continuously.

Mark owners should take steps to ensure that the quality of any goods or services provided by their licensees is representative of the goods or services listed in the owner’s registration. Uncontrolled or “naked” licensing results when the mark owner fails to adequately control the quality of the licensees’ goods or services. Where a licensee uses the mark but changes the quality of the goods or services and the owner fails to exercise adequate quality control over the licensee’s actions, the mark will cease to function as a symbol of the quality of the goods or services listed in the owner’s registration. In addition, the mark will no longer represent a single, controlled source of the goods or services listed in the owner’s registration. This type of activity may cause the mark owner to unintentionally abandon the mark and lose the registration.

The amount of control that mark owners are required to undertake to adequately maintain quality control over their licensees varies with the market and the business type. Possible methods mark owners may use to retain quality control include relying on their licensees, undertaking direct supervisory control, involving third-party oversight, and requiring contractual provisions regarding quality control.

In a 2002 appellate court decision, Barcamerica v. Tyfield, a trademark owner granted its licensee the right to use its registered Da Vinci trademark for wine products or alcoholic beverages but included no controls or restrictions with respect to the quality of goods bearing the mark. No evidence suggested that the mark owner was familiar with or relied on the licensee’s efforts to control the quality of the wine the licensee produced under its registered trademark. Because the mark owner had entered into a naked licensing arrangement, the court prevented the mark owner from asserting any rights in its registered mark against a third party. The court also canceled the owner’s trademark, which had been registered for nearly 20 years with the USPTO.

Acquire the Mark With Goodwill
A party wishing to acquire a federally registered trademark or servicemark from a mark owner should make sure that the sale transfers the mark along with the goodwill associated with it. The goodwill of a mark symbolizes the specific nature and quality of goods or services associated with the mark.

A sale of mark rights apart from the goodwill symbolized by the mark is known as an “assignment in gross.” An assignment in gross is invalid and passes no rights to the assignee (the party attempting to purchase the mark). The subsequent mark owner (the assignee) will be limited to its own date of first use o f the mark and will be prevented from relying on the original mark owner’s date of first use. Dates of first use become important when the assignee wishes to challenge an intervening third party’s use of the mark.

Once the assignee receives the mark along with the goodwill associated with it, the assignee must continue to use the mark in a manner similar to the way the prior owner used it. In other words, the assignee must continue to use the assigned mark in connection with goods or services of a similar nature and quality as those sold by the prior owner under the mark.

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Use the Mark Properly
Trademark and servicemark owners should properly use their marks as source identifiers of the specific goods or services listed in their registrations. They should use their marks as adjectives that refer to the category of goods or services (e.g., Oreo brand cookies or Band-Aid brand bandages), should use the registration symbol ® when referencing the registered mark and should use the mark as specifically stated in the registration (e.g., Oreo® or Band-Aid®). They should avoid using their marks as nouns or possessives of the mark stated in the registration (e.g., “Get your Oreos” or “Get your Band-Aids”).

If mark owners repeatedly use their marks improperly (e.g., “Get your Oreos” or “Get your Band-Aids”), the consuming public may also adopt the improper use. If so, the mark may eventually be considered the generic name of the goods or services stated in the registration—the public may interpret the word as indicating the nature or class of the goods or services rather than their source—and rights in the mark may be lost and the mark abandoned.

Use the Mark As Registered
Once a trademark or servicemark has been federally registered, the mark owner needs to monitor its own actions to make sure that the mark is used as shown in the registration. Although mark owners may change their marks, they cannot make substantial changes to them.

Where material modifications to the mark occur, the newer mark may form a different commercial impression than the earlier mark. As a result, the owner may be prevented from claiming priority of use in the earlier form of the mark. If so, rights in the earlier mark may be lost and the mark abandoned. For example, an appellate court concluded that a change from the registered mark “The Movie Buff ’s Movie Store” to “moviebuff.com” was significantly different because “moviebuff.com” contains three fewer words, omits a space, drops the possessive, and adds “.com” after “moviebuff.” The court concluded that consumers would not view the marks as identical and prevented the mark owner from claiming priority of use in the “The Movie Buff ’s Movie Store” mark.

Substantial modifications to the mark may also affect the owner’s ability to meet the USPTO’s requirement that the mark be used continuously.

Sell Goods or Services As Registered
Mark owners also need to make sure that their marks are used in association with the goods or services that are stated in their registrations. Although mark owners may make minor changes to the goods or services sold under their marks, they cannot substantially change the quality or type of goods or services sold under the mark. For example, an appellate court excused a mark owner’s change in its cat food formulation from dry cat food to cat food having a dry gravy coating. The new cat food was served dry, or the consumer could add water to the cat food to make gravy with the cat food. The appellate court noted that the inherent and identifiable character of the goods remained the same and concluded that the change did not result in abandonment of the registration.

Trademarks and servicemarks symbolize a certain quality and type of goods and services. If the quality or type of goods or services changes substantially, the mark may cease to represent that type or quality level. If so, rights in the earlier mark may be lost and the mark abandoned.

Mark owners cannot broaden the scope of their rights to include substantially changed goods or services that were not listed in the original registration. Generally, minor changes in the type of goods or services, the quality level, or the style of goods or services do not result in abandonment of the mark. When minor changes do occur, mark owners may amend their registrations to clarify or limit the goods or services listed in their registrations to reflect the minor changes.

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File Papers on Time
Owners of federally registered trademarks and servicemarks need to file the requisite papers in a timely manner to prevent their registrations from being canceled by the USPTO. Docketing and backup docketing of the deadlines discussed below will help ensure that the necessary papers are filed on time. Mark owners also need to make sure that their registered marks are being properly used throughout the registration period so they can comply with the USPTO’s requirement that the mark be used continuously for the stated goods or services.

Generally, after the end of the fifth year but before the end of the sixth year following registration, registered mark owners must file a Section 8 (§8) Affidavit of Use with the USPTO. In the §8 Affidavit, mark owners must state that they are using the mark for the exact goods or services stated in the registration to prevent the USPTO from refusing the affidavit as representing use for different goods or services. Whether the USPTO will accept a §8 Affidavit for a mark that has changed format depends on the degree of change. Where non-use has occurred and the owner wants to avoid cancellation of the registration for non use, the §8 Affidavit must show special circumstances that excuse non-use and lack of intent to abandon the mark. Assuming that a §8 Affidavit is timely filed, trademark registrations granted prior to November 16, 1989, have a 20-year term, and trademark registrations granted on or after that date have a 10-year term.

If a mark has been in continuous use in commerce for at least five consecutive years, a mark owner may file a §15 Affidavit of Incontestability with the USPTO. The benefits of having a registered mark deemed incontestable include conclusive evidence of the registered mark’s validity and the registrant’s ownership of the mark. Registered mark owners need to renew their registrations by filing a §9 Renewal Application with the USPTO during the one-year period prior to the registration’s expiration. The mark owner only needs to include a list of the goods or services that are being used if the renewal application is intended to cover less than all the goods or services stated in the registration. A §9 Renewal cannot list goods or services that are not listed in the registration.

Assuming that a §9 Renewal is timely filed, trademark registrations granted prior to November 16, 1989, have a 20-year term, and trademark registrations granted on or after that date have a 10-year term.

Monitor Infringers
The trademark laws impose a duty on mark owners to monitor or police infringers. Failure to police third-party infringers can lead to loss of rights in the registered mark because unconsented uses progressively weaken a mark’s strength and can cause the mark to become generic and, hence, abandoned.

One step that mark owners can take to monitor infringers is to monitor applications pending within the USPTO that conflict with their marks. For example, mark owners can search the USPTO’s weekly Official Trademark Gazette for potentially conflicting marks or retain search firms to monitor pending applications and alert mark owners of potentially conflicting marks.

Another step mark owners can take to monitor infringers is to monitor new federal registrations that conflict with their marks.

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When a potentially conflicting mark is discovered, the mark owner may take steps to stop the conflicting use. One option available is to send a cease-and-desist letter to the third party requesting that the third party abandon its pending application or its registration and switch to another, non-confusing mark. Another option is to initiate an opposition proceeding within the USPTO to try to prevent the third party’s application from maturing into a registration.

Where the third party’s mark has already matured into a registration, the prior mark owner may initiate a cancellation proceeding within the USPTO to cancel the subsequent registration.

Another step mark owners can take to monitor infringers is to monitor activities outside of the USPTO. Mark owners should monitor third parties who use their marks without consent or in a confusingly similar manner. For example, mark owners may wish to monitor third-party uses of their marks on the Internet. After learning of a third party’s unconsented use of a potentially conflicting mark, mark owners may send a cease-and-desist request to the wrongful user or initiate a lawsuit against the wrongful user.

Monitor Generic Uses
Finally, mark owners should monitor third parties who use their registered trademarks or servicemarks in a generic manner—i.e., to identify the nature or class of the goods or services rather than to indicate the source of the goods or services, such as “Get your Oreos” or “Get your Band-Aids” instead of “Oreo brand cookies” or “Band-Aid brand bandages.” Again, this is important to prevent the mark from being weakened and deemed abandoned. Unfortunately, mark owners have little recourse against third parties who use their marks in a generic sense in books, magazines, newspapers, or other media. One thing the mark owner can do in this situation is to send a letter to the media requesting that it not use the mark in a generic sense and providing instructions regarding proper word choice to be used in referencing its registered mark. Such steps are important because it is difficult to resurrect a generic name back into existence as a trademark or servicemark.

For More Information
By following the steps outlined above, owners of federal trademark and servicemark registrations will be able to protect their marks and their registrations. More information and application forms can be obtained from the U.S. Patent and Trademark Office at www.uspto.gov.

by Janet M. Garetto 
The author is an attorney in the law firm of Jenkens & Gilchrist P.C., 225 W. Washington St., Chicago, IL 60604-3418.

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Other Intellectual Property Rights
Trademarks and servicemarks are not the only intellectual property rights that a food company professional should be concerned about. For additional information, see “Protecting Innovation: Patents vs Trade Secrets” by Judie D. Dziezak in the April 2002 issue of Food Technology (available at www.ift.org/publications/docshop/ft_shop/04-02/04_02_pdfs/04-02-dziezak.pdf).

The author thanks Elizabeth Bumbales and Amy Sierocki for their assistance with this article.