Trademark 101: How You Can Lose Your Trademark

Don’t let that trademark certificate fool you. It might declare that you own trademark rights to a logo or name, but you can lose those rights just as easily as you acquired them.

A trademark registration certificate from the United States Patent and Trademark Office (USPTO) is really just a single step in the journey that is trademark ownership. Now that the USPTO has granted you trademark rights, you must do your part and protect those rights.

To maintain a trademark, active engagement in the market is essential. This includes using the trademark symbol (™) in commerce, signifying your exclusive rights to the mark. The USPTO does not police the market for unauthorized uses of your mark. Nor will it enforce your rights for you. The onus lies with the trademark owner to prevent others from infringing on their trademark rights.

Only businesses that actively monitor and protect their marks, searching out and prosecuting cases of infringement, will continue to benefit from trademark rights. Businesses that fail to protect their trademarks will see their rights be diluted and possibly cancelled through litigation, one of the grounds for cancellation.

There are two primary ways businesses can put their trademarks at risk: through non-intentional acts of the owner, and through non-use of the mark.

Non-intentional acts of the owner

There are many different non-intentional acts that can precede the loss of trademark rights, but they all relate to the owner’s failure to protect the mark.

Uncontrolled licensing of a mark can lead to the loss of trademark rights, particularly for famous marks. Sports leagues are shining examples of controlled licensing. Not only do they screen licensees, but they police the market for unauthorized use of their trademarks. If a rogue store sells merchandise bearing a team’s or the league’s trademarks without prior authorization, it will face a lawsuit. Sports leagues rarely let trademark infringement cases go without a fight.

Moreover, trademark registration applications must be carefully crafted to ensure protection against potential infringers. Trademark owners must also look out for any other products or services using the same or similar marks. While the same or similar names can exist across different classes of goods and services — “DOVE” is a registered trademark for both a soap and a candy bar, produced by different companies — trademark owners still need to monitor such uses. Trademark infringement cases are based on the likelihood of confusion. That is, if consumers will likely confuse one for the other, there might be infringement.

Unsavory or unfavorable publication of a mark can tarnish it. Businesses can and should police for this type of usage and prevent it from spreading further. Frequent and varied use of distinctive marks in negative contexts runs directly counter to the positive aspects of trademark registration and should be actively monitored for preventative purposes.

Failure to police against these types of trademark misuse can dilute the mark’s meaning. Since trademarks are issued to create and preserve distinctiveness, anything that dilutes the meaning of a mark can precede its cancellation. Businesses cannot be satisfied with the certificate from the USPTO. Without protective measures, a mark can lose meaning and face cancellation.

On the other hand, thorough protection of branding and effective market permeation can actually lead to so-called “genericide”. The term refers to any mark that has gained such prevalence that it is used as a generic reference for all products in the same vein. Marks that have suffered from this kind of success include Aspirin and Cellophane, just to name a few. Once a term has reached sufficient generic usage, third parties can seek cancellation of a mark through this argument.

Non-use of a mark

While policing the unauthorized usage and reproduction of marks can go a long way towards preserving trademark rights, one’s own house deserves equal consideration. The trademark institution was designed based on usage of marks in commerce, not registration alone. Active use is therefore intrinsic to maintaining a trademark.

For this reason, trademark owners must prove continued use on a regular basis. Between the 5th and 6th year after registration, businesses must submit proof of continued use. They must then renew their trademarks every 10 years after the registration date. Unless proven otherwise, not using a trademark for three years in a row is considered abandonment.

Maintaining a relevant record of use is important since failure to do so opens your mark to cancellation by litigation. Fortunately, attempts to prove non-use require compelling and conclusive evidence, since the matter involves complete forfeiture of respective trademark rights. However, without adequate attention to maintaining and recording usage with the USPTO, cancellation remains a possibility. (Harvard has more information on this here)

In any of these circumstances, simple actions can be taken to ensure that trademark rights are maintained. Regular policing of usage and licensing can help protect reputation and prevent dilution. Keeping accurate and relevant records of usage can prevent third-party pursuit of cancellation. Through these simple, if sometimes arduous, measures, trademark rights and protections can be maintained to the benefit of brand reputation and revenue generation.

Understanding the nuances of trademark law, especially in relation to international rights, customer perception, and marketing strategies, is key to effective trademark management. Property in the form of trademarks is a valuable asset and requires diligent attention. Consulting with a trademark attorney can help ensure you avoid facing the potential of losing your trademark.

Xavier Morales, Esq.

About the Author:

Xavier Morales, Esq.

Mr. Morales founded this trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Since then, he has filed more than 6,000 trademarks with the USPTO. You can learn more about Xavier here.

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