In our previous article titled “Trademarks 101” we wrote about the ins and outs of a trademark. In that, we discussed the importance and benefit of registering a trademark. This article is part one at looking into enforcing a trademark and ensuring others are not using a trademark without proper permission.
What Is A Trademark?
As we discussed in our previous article, according to United States law, a trademark is something that can identify the source of goods.
Do Trademarks Expire?
As discussed in our previous article, trademarks have an infinite lifespan.
Potential Misuse of Trademarks
There are many ways that someone may misuse a trademark. The most common forms of trademark misuse are as follows:
Infringement. This is when a person steals the trademark and uses it as their own
Cybersquatting. This is when a person buys a domain name or social media handle with the trademark’s name. An example was when google created the Android platform. A person purchased the domain name Android.co.in to try and sell it to google.
Diluting. This is when someone uses a similar trademark to try and confuse and take advantage of the goodwill generated by the original trademark company. For example, in the movie “Coming To America” a fictional fast-food restaurant called McDowells was diluting and profiting on McDonald’s established trademark. Another example is if a mechanic with the last name Disney were to open a car repair shop and called it “Disney Auto World,” thus diluting the established Disney trademark.
False Advertising. This is where a trademark may be used in an advertisement without the permission of the trademark owner. An example would be if Tom Brady appeared in a commercial in his Tampa Bay Buccaneers Jersey without permission from either the NFL or the Tampa Bay Buccaneers.
Tarnishment. This is when a trademark is used to tarnish the reputation of the trademark. An example was when someone created the website microsoftsucks.com where they used Microsoft’s trademark to tarnish Microsoft’s reputation.
Responsibility Of A Trademark Owner
It is the responsibility of the trademark owner to ensure that their trademark is not being misappropriated. The best way is to register the trademark with the United States Patent and Trademark Office (USPTO). This endeavor, however, can be costly and time-consuming, so if this is not an option, then there are steps that a trademark owner can take to give notice to others about the trademark’s ownership.
Monitor The Trademark Usage
There are companies that can be contracted that will not only look to see if a trademark is being infringed but will also assist with the acquisition of similar domain names to prevent cybersquatting. This creates a proactive form of protection of the trademark.
Use The Trademark Properly
To have a defense on future claims against illegal use of a trademark, the owner needs to use their trademark as a way that identifies it as a trademark. The best way to do this is to use the trademark as an identifier. An example of this is the Nike shoe company using their trademark name as an adjective such as “Nike shoes” or “Nike Sportwear”. By placing the trademark name “Nike” in front of the noun, the company is identifying its name as a trademark and using it as such.
Secure Social Media Handles And Domain Names
As mentioned already, a trademark owner might want to try and purchase all similar domain names that can lead to the abuse of a trademark. In addition to domain names, the trademark owner will also want to proactively create social media handles for the trademark.
If you need assistance, contact Dowd Law. We can assist in registering a trademark or help you take proactive steps to establish trademark ownership. Simply book a consultation with our experienced representation.