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Building the Strength of Your Trademark

So, you can rest easy now that you have a federal trademark registration, right?  No! 

Federal trademark registrations provide many protections and advantages to trademark owners.  Nevertheless, even with federal trademark registrations in hand, trademark owners will benefit from active efforts to build and maintain the strength of their trademarks.

A trademark owner can lose trademark rights by not using the trademark, by not using the trademark correctly, by failing to enforce the trademark against third-party infringers and/or by failing to object to generic misuse of the trademark.  Ironically, in some instances trademarks can be become so famous (think, GOOGLE®, VELCRO® and STYROFOAM®) that trademark owners must switch gears from heavily promoting their trademarks to limiting how people use their trademarks.  Like failing to enforce a trademark against known infringers, improper use of a trademark by the public may diminish the trademark’s value. 

It is important to keep in mind that one major rule in using a trademark properly is to use the trademark as an adjective, not a noun or a verb.  In other words, the trademark is the brand name (an adjective) describing the associated goods or services. 

Trademarks can become generic if the public starts using the trademark to refer to what something is, rather than as a brand name.  Therefore, some trademark owners develop branding campaigns to educate consumers on how to properly use their marks.  For example, the companies behind the XEROX® and KLEENEX® trademarks have devoted considerable resources in such campaigns to keep these trademarks from becoming the generic nouns for photocopies and tissues.  A trademark owner is wise to monitor the trademark’s usage on the internet, in the media and in dictionaries, and should object to improper treatment, such as generic misuse, if necessary.        

With respect to enforcement of trademark rights against third-party infringers, trademark owners must act with reasonable diligence in enforcing their trademarks rights.  However, courts do recognize the expense and potential business considerations involved in bringing a trademark infringement lawsuit, and as such, a trademark need not be enforced against every nameless John Doe who misuses the mark through a random comment on Facebook.  On the other hand, if the trademark is not enforced against the owner’s arch nemesis who is stealing sales, there is a risk that the mark will be found to have lost strength, or worse, that the trademark has become abandoned and therefore completely unenforceable. 

Please contact is if you would like to learn more about recommended protection efforts for your trademark.