How You Can Lose a Trademark

March 17, 2022
McDermott IP Law

Your intellectual property deserves to be protected. After all, it’s YOUR hard work and should be yours alone to profit off, work with, and innovate.

We’ve previously talked about what you need to start the process, but today we’re looking at situations where your trademark could actually be stripped away.

Your trademark expires

Once you establish a trademark, you will now begin the clock on when certain filings are required to maintain the trademark. There are unique deadlines within the first ten years after your filing, and it gets easier to maintain a trademark after that point. The deadlines are:

  • Between years five and six after your filing: you must fill out a Section 8 Declaration which states you are either actively using the trademark in commerce or have a permitted exemption for non-use
  • Between years nine and ten after your filing: you must fill out a Section 8 and Section 9 Declaration. As above, a Section 8 Declaration shows you are either using your trademark or have an excuse not to. A Section 9 Declaration is an application to maintain your trademark going forward.
  • Every ten years after: you will repeat the Section 8 and 9 Declaration process described above every ten years for the life of the trademark.

If you fail to comply with those deadlines your trademark will expire and be removed from the USPTO filings. You do have a six-month grace period if you miss a deadline, but you will need to pay an additional fee for a late filing to be considered.

Someone successfully challenges your trademark

Trademark disputes can involve situations where someone either believes your trademark infringes on their intellectual property, does not stand on legal ground, or is no longer being properly used.

We’ve previously explained the trademark opposition process which can happen at any time. Our previous post also explained that the USPTO will open a 30-day window for the public to oppose your trademark.

If your trademark is facing opposition, the filing party will need to provide proof your trademark actually violates any requirements. Once the proof is provided, you will have the opportunity to defend your mark with USPTO officials (disputes generally do not extend to court cases unless trademark law is specifically being challenged).

Your trademark becomes generic

This situation is rare, but you may be surprised to find out many common words and phrases were once trademarked as official titles before becoming “generic.” Examples include zipper, kleenex, Google, dumpster, and several more.

While losing your trademark can be frustrating, this form can also be satisfying in a sense. Your trademark being generic means your mark has become so synonymous with the industry or product it is associated with that EVERYONE is talking about it.

No matter the reason your trademark is at risk, we want to protect your innovation. You will want a dependable intellectual property attorney by your side, so contact McDermott IP Law today and innovate with peace of mind.

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McDermott IP Law

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