Generic Trademarks

Your product is now known as the generic version of the goods. And the best example we’re going to use, I don’t know if most of you remember in the seventies, you did not say, “I want to get a copy of this made.” You would say, “can you get me a Xerox?” Well, Xerox company became very, very concerned and suddenly they did a huge information campaign. We are the copy company. So people would not say, “get me a Xerox.” It would now say, “get me a, get me a copy.”

Naked Licensing

Another way of losing your mark is something called naked licensing. I become fairly popular with my mark. My mark becomes desirable. I decide to franchise. So I’m McDonald’s, I go out and I have a bunch of new McDonald’s restaurants. However, in my franchise agreement, I do nothing that regards the quality of the product. Something I should say with a trademark, when you have a trademark, it implies a certain quality. So therefore, as a trademark owner, if I license out my marks to other parties, I have to make sure that they are performing to my standard of quality. That means my license agreement must say, we’re going to inspect your restaurant every six months, and you have to comply. And here are our rules and regulations, our quality standards. If you don’t have that in your license, that’s called a naked license, and theoretically you can lose your mark because you’re not controlling the most important aspect of your trademark, and that is the quality of your goods.

Policing Your Trademark

Now, another way to lose the mark is I don’t police my mark in a marketplace. For instance, I become aware of a few other companies that are using my mark, but I say, eh, doesn’t bother me. Either it’s not that close or it’s a big enough marketplace, or maybe they’re on a different coast and I don’t worry about it. But if I don’t police my mark, I basically say, you’re allowed to use my mark. You’re going to come back to me and say, I’ve been using this mark in commerce for five years and you’ve never objected to it. At that point, I’ve lost my mark. Everyone can use it.

How to Lose Your Trademark

I’m a successful trademark company and I have a fairly large portfolio of trademarks, 50 to 100 of them. That gets to be a little bit unwielding. The question becomes, how do I make mistakes and I lose my trademarks? Okay, first of all, the most obvious loss of a trademark is I don’t use it anymore. This is a very popular car manufacturer.

I don’t know if you remember the Ford Taurus sold millions of cars and eventually they just quit using that name for cars. Once you quit using a mark for three years, it’s considered technically abandoned. So that’s it. Another way to lose trademarks is simply you have to renew trademarks. A renewal occurs every five to six years and every 10 years thereafter or every 10th year.

Expanding Your Trademark

When one files a trademark, one files on identification of goods or services, you have a listing. If I am a company and I sell product A and I trademark product A and I now venture out and I want to now sell product B and there’s no real relationship between products A and B. Let’s say one’s our boat and the other’s a car. They’re both vehicles but they’re really not in the same marketplace and I file the trademark for cars. Would I need to file a separate follow-up trademark for boats? I would say yes because simply the two products aren’t related. However, if I started out with sports cars and I went to pickup trucks, would I really need another trademark? They’re both motor vehicles, they’re close enough.

Production Without a Patent

It is important to establish a confidential relationship with your customer. If your invention is not patentable and customers won’t sign an NDA. Of course, when you start to manufacture your invention, your competition will see it, and can legally copy it until your patent issues. Even if you do not share your invention, but you file a patent application, it will be published 18 months after filing, unless you give up all rights to file abroad. In conclusion, it is crucial to take necessary precautions when sharing your invention with others. By doing so, you can protect your intellectual property rights and ensure that your invention remains safe from theft or copying. If you have more questions, we suggest consulting with an experienced patent attorney.

Branding & Your Trademark

One of the values of a trademark, it’s called branding. Once your mark becomes popular in the marketplace and people associate that mark with a quality product and a desired product, that makes your branding more valuable. You have a registered trademark with that brand, that is tangible asset that you can franchise, license, of course, sell your own products and expand out in additional areas. Or you can simply sell your company based on your trademark name because the value comes in of the association between your mark, quality, and customer desire.

Can I Contact the USPTO Directly?

As an inventor and applicant, you may contact the Patent Office directly. The Patent Office will answer an applicant’s inquiries as to the status of the application and inform you whether your application has been rejected, allowed, or it is awaiting action. However, if you have a patent attorney or agent of record in the application file, the Patent Office will not correspond with both of you concerning the merits of your application. All comments concerning your application should be forwarded through your attorney or agent. As in all legal representations, though, you may hire or fire the attorney of your choice. You may also prosecute your patent application without a patent attorney by dealing with the patent office directly. We do recommend, however, that you talk to an experienced intellectual property attorney about all matters patent office.

Trademarks & Domain Names

There’s always the fear that somebody’s going to put in a domain name and use your same trademark as a domain name. First of all, yes, if you get a trademark, it is bright, behooves you to go ahead and instantly register for the domain name. It’ll prevent future fights. Even my own firm’s trademark name has been knocked off by multiple players, even though they know about it. So, yeah, get your domain name right away. The good news is, though, if you have a trademark and somebody comes along and files for a domain name that is your trademark and sells similar goods, you can basically file a complaint and take over or force the transfer assignment of that domain name to you. It’s called an ICAN complaint and that’s how you take care of somebody who is violating your trademark via domain.