Trademark Loss and the Need to Police Trademarks
“They have to protect their IP or they’ll lose it!” Is a not uncommon refrain. And it’s not wrong…at least in trademark. If someone is talking about copyright or patent, they are confused. You don’t lose those rights. It’s possible (and maybe even probable in many cases) that you may lose some value from the underlying work in these cases, but that’s not the same as losing your rights entirely. But trademark? Trademark CAN be impacted by failure to protect the rights. It’s not a straight “Oh, you failed to sue this person so now you have no trademark” situation, but it is still a problem that trademark holders face. So let’s talk about that a bit.
Why is Trademark Different?
To start, we need to understand WHY trademark functions differently from copyright and patent in this case. As I mentioned in an earlier post, a trademark is meant to differentiate goods or services. A trademark’s value is in its’ ability to identify that good or service. Trademark law is supposed to prevent consumer confusion. This is very different from either copyright or patent, which are about protecting the actual expression or invention. For copyright, we care whether the expression is copied (which can mean a lot of things). For patent, we care whether the invention or process is being practiced (but don’t care about copying). For trademark we care whether a reasonable consumer might be confused about the source of a goof or service.
It makes sense, then, that there’s a need for the trademark holder to enforce their rights. If others can simply use the mark without any consequence, then that mark may cease to indicate the source, consumers may be confused, and the mark loses all of its value. Obviously, how important this is a question for the rights holder. Different marks will have different value to the rights holder, and it can get especially tricky when a mark has value for licensing that a the owner may not want to lose. What makes sense is going to depend on the mark, the rights holder, and its value, and is definitely something a concerned rights holder should talk to a lawyer about. Figuring out the right balance is important, and this site isn’t designed to give actual legal advice (and my job would frown heavily on that)!
How Can a Mark Be Lost?
So we’ve established that trademark holders can lose their mark through failure to police, but we haven’t gotten into the specifics. Plus, there are other ways to lose a mark. Here’s a quick breakdown of some of the main ways a mark can be lost:
Genericism - A mark can become “generic” when it ceases to identify the source, and instead just comes to mean the general product category, regardless of the source of the product. One of the big examples for this is Aspirin, which Bayer tried to use as a mark. Unfortunately for Bayer, the general public thought of Aspirin as the generic name for the drug acetyl salicylic acid, and as a result other companies could use “Aspirin” for sales of the drug to the public. Business Insider has an article from 2018 of brand names that have either become generic or tend to tread the line very closely. Some examples, like Google or Coke, still hang on to the mark for now.
Abandonment - You have to use your mark to keep it. Specifically, the state says that if you stop using the mark “with intent not to resume” you lose the mark, and that that intent can be inferred by circumstances. A trademark owner can revive their mark, even if they’ve previously abandoned it, but only if another part hasn’t gained rights to the mark during the period of abandonment.
Failure to Police and Naked Licensing - If a trademark owner just licenses the mark without maintaining control over its use or failed to police the use of the mark generally. Depending on the facts of the case, failure to police could lead to a finding of abandonment, the mark becoming generic, or a finding that the mark is weak and simply fails to indicate the source any more. For the later, the idea isn’t that the mark now indicates the type of product generally, regardless of source, but that the mark has simply ceased to identify the source any more. If others have been using the same or similar mark, that can mean that those marks are stronger indicators of source, which is bad news for the original rights holder.
What Does This Mean?
Ultimately, this means that many trademark owners are going to want to enforce their marks…even if they might be generally friendly to the use absent the need to protect their rights. Depending on the specifics of the mark and the potential infringement, this can be as simple as “you can’t use our logo” or as intense as “no, you can’t tag the item you’re selling on Etsy with those words.” Trademarks may be character names, phrases, logos, etc. So, yes, a rights holder may well be concerned with you tagging a piece with a character name or phrase, even if they are OK with fan art (or even the sale of fan art), if that name or phrase is a trademark they use.
Of course, trademarks are generally limited by other factors. For example, if you start a business called “Little Letters” that focuses on, say, early childhood literacy, you probably couldn’t enforce that mark against someone who opened a stationary store under the same name, barring some additional issues of fact that changed things significantly. So a rights holder isn’t required to enforce their rights (and generally won’t HAVE rights) against someone in a totally different line of business, as an example. Trademark rights are also geographically limited…though that’s significantly complicated by the existence of the internet, so I won’t get into that here.
