When Is a Trademark Not Enforceable?

Your trademark is only protected if it's in use - meaning if you don't use it, you lose it. And you can only prevent others from infringing on your mark if it's active. This article explores what comprises trademark enforcement and what would cause your mark to lose protection.

When is a trademark not enforceable?

A registered trademark may not be enforceable for various reasons - let’s explore these:

1. Dormancy

Your trademark can be deemed abandoned, losing protection, if you fail to use it over a specific period of time. In the US, this period is 3 years. Trademark owners and users are required to provide proof of use of the marks over a certain period from the time of registration. Upon verification, the person or entity retains the right to continue using the mark.

Also, if your trademark represents multiple goods and services, you must continuously offer all the goods and services registered under your trademark, failure to do so can cause partial abandonment.

2. Trademark has become generic

Genericization occurs when a trademark somehow becomes the generic name with which its goods or services are referred to. Then, it ceases to be unique and can no longer be protected. Examples of generic trademarks include "elevator," "aspirin," and "thermos." These words were once trademarks but were used generally to refer to the products they represented and lost distinctiveness.

3. There are issues with licensing and assignment

Improper trademark licensing or lack of oversight can weaken your rights and diminish the trademark’s value. Failing to maintain quality control over licensees may even lead to a loss of trademark protection.

Similarly, when assigning a trademark, you must transfer the associated goodwill - the reputation and customer recognition tied to the brand. This typically means selling or transferring the business assets connected to the trademark, such as product lines, branding, or customer relationships. Without this, the assignment may be deemed invalid and unenforceable.

4. Trademark is deceptive

A trademark may not be enforceable if it gives misleading claims about goods or services. A mark is considered deceptive if it's likely to mislead consumers on the nature, quality, and source of the goods and services being offered. An example of a deceptive trademark is one that says a product is made of a certain material when it really isn't.

You may be denied registration if your trademark is considered misleading. You may also be challenged in court.

5. Trademark lacks distinctiveness

If your trademark merely describes the goods or services you offer, it's likely weak and difficult to enforce. For example, one can't use the word "orange" as a trademark for actual oranges.

A descriptive mark is only protectable if consumers come to associate it with a specific seller over time. Take, for example, "Holiday Inn". This gives the mark a distinctive "secondary meaning"; thus, it's no longer merely descriptive. Surnames and geographic terms also must acquire secondary meaning to be protected.

As mentioned earlier, genericized trademarks aren't protectable.

6. Existing/prior rights

Your mark may not be enforceable if it infringes on the rights of an existing registration. In some instances, even if not registered, another party may have common law rights to the mark based on prior use. This may limit the enforceability of your mark.

7. Tolerating infringement

Failure to protect your mark against potential infringement can negatively affect the identity and strength of your brand.

Enforcing your business' trademark isn't something you should procrastinate. Taking too long to address an infringement could cost you your mark. The old adage "you snooze, you lose" best describes trademark law. Allowing continued use of your trademark by third parties could paint you as complicit in allowing the use. The infringing party could argue that they have used the mark for an extended period, long enough to establish themselves as a reputable brand.

8. Infringement happens in a different jurisdiction or country

A trademark owner may not enforce against infringements of their trademark if the violation occurred beyond the United States. Intellectual property owners generally can't enforce their trademarks in the US for infringement occurring in a foreign country. It's in the best interest of businesses to register their marks in foreign jurisdictions in which they operate.

9. Fraudulent registration

If you obtain a trademark fraudulently, it may be invalidated.

10. Misuse of the trademark

Using a trademark in a manner that's inconsistent with its registration can make it less enforceable.

Enforcing trademarks

Trademarks are a critical business asset built through reputation and goodwill. Misuse through infringement, false advertisement, unfair competition, cybersquatting, tarnishment, and dilution is a threat to trademark enforcement. Failure to protect your mark from the aforementioned issues will lead to its weakening (it may lose its distinctiveness).

Trademark enforcement strategies typically involve monitoring potential infringement, writing and sending cease and desist letters, and initiating legal recourse, among others.

1. Monitoring trademarks for potential infringement

Even if your business actively uses the trademark, the USPTO doesn't enforce it for you. It's up to you to enforce your mark and take action against potential infringement.

To monitor a trademark, regularly check USPTO listings to see if a similar mark has been registered nationwide. For state-registered marks, check state listings. Watch out for individuals and companies offering competing products and services. You can either monitor the mark yourself or set internet alerts. You can also hire a professional to monitor the trademark for you.

When investigating potential infringement, gather and document cases of violation. This may include screenshots, product samples, and marketing materials. Also, determine whether the infringement is enough to cause confusion among consumers. Seek the services of a trademark attorney to assess possible options and determine the best course of action.

2. Cease and desist letters

This is the first step to enforcing your intellectual property. A cease and desist letter identifies the nature of the infringement and demands that the infringer cease the violation immediately. Infringement lawsuits are expensive. Therefore, the infringer may back down if they realize the mark is owned by another party.

If the cease and desist letters are ignored, you can proceed to file a lawsuit. If the trademark is registered with the USPTO, file the suit with a federal court. File with state courts of the mark is a state registration.

You'll be required to prove to the court that the violation confuses your customers. You may also be required to demonstrate that your business suffered monetary damages. In most cases, the court will issue an injunction, stopping the other party from using the mark. The infringer may be required to forfeit profits gained in the use of the mark if they're found to have acted in bad faith. The court may also force them to pay additional damages, which may include legal fees.

Defense against a cease and desist letter may include:

Attacking the validity of the mark if it's unregistered. If a mark is unregistered, you can prove that it is purely descriptive and lacks secondary meaning.
You may also argue that the mark has become generic and, therefore, is an industry term for describing goods or services.
In an infringement suit, you may be able to show confusion is unlikely.
Those who have been sued for using trademarks in commentary, parody, criticism, or art may be able to assert First Amendment rights.

3. Dilution lawsuits

Dilution lawsuits can only be brought forth if the trademark is famous. You can sue to prevent others from using your mark to avoid damaging its brand identity or being rendered generic through overuse. It's common for defendants in such cases to argue against the distinctiveness of a mark.

Trademark dilution occurs when an individual or a business uses a mark that resembles a famous mark, which impacts consumer perception of the latter. Infringement claims require proof of consumer confusion, while dilution claims don't.

Trademark dilution is covered under federal laws and multiple state laws. The federal Trademark Dilution Act of 1995 preempts state laws. Under the Act, the owner of a mark can enforce its rights without having to prove the likelihood of confusion.

Dilution applies even if consumers can't confuse particular goods and services with those associated with the famous mark. For example, an Apple dealer can sue a furniture retailer for trademark dilution if they're using the same mark. This is regardless of the difference in products and services offered.

"Blurring" and "tarnishment" often occur from dilution. Blurring results from violating the distinctiveness of a famous mark. Tarnishment occurs by harming the reputation of a famous mark. You can make a case for tarnishment if the infringing mark is responsible for inferior products and services that consumers may, in turn, associate with you. For example, the sale of KFC-branded tires may blur the association between Kentucky Fried Chicken (KFC) and chicken.

When determining whether dilution occurred by blurring, the following must be considered:

Degree of recognition of the mark
How distinctive is the famous mark?
Degree of similarity
The extent to which the owner substantially uses the famous mark
The intent of the infringing mark is to associate with the famous mark
Actual association between the diluting mark and the famous mark

Only famous trademarks are protected under the Dilution Act. Some of the factors to consider if a mark is famous include:

How recognizable is the mark?
Duration and use of the trademark
Duration and extent of advertising for the mark
The geographic area in which the mark is used
Has the mark been used by third parties, and for how long?
If the mark has a federal registration
Method of distribution and marketing for the mark

The most common defenses against trademark dilution include:

Fair use: This occurs when particular trademarks are used by third parties, but they can't be held liable. This is considered "free use". In some instances, fair uses may include advertisements that compare the products of one competitor to another.
Collateral use: This occurs when a person or entity uses a trademarked item as a component of a more complex product.
Non-commercial use of the mark. An infringer may argue that their use of the mark isn't aimed at generating revenue. Thus, they may be considered consumers of the product or service offered.
All forms of news reporting or commentary.
Parody: A classic example of this is the June 2023 Supreme Court determination of the Jack Daniel's v. VIP Products case. Jack Daniel's had filed an infringement and dilution lawsuit against VIP after it sold a dog toy that resembled a Jack Daniel's whiskey bottle. Jack Daniel's won the first trial against VIP. A federal appeals court later overturned the win, ruling that VIP wasn't liable because the toy was a "parody" protected by the First Amendment.

The Supreme Court reversed the judgment, holding that those who use others' trademarks to identify their own products (e.g., dog toys) aren't shielded from liability for trademark infringement.

So what next?

Actively enforcing your trademark is critical. This ensures it remains valid and prevents others from infringing on your rights. If you have questions about the enforceability of your trademark, consult with a qualified trademark attorney.

By understanding these potential challenges and proactively policing your trademark, you can increase enforceability and maintain the strength of your brand.

Additional resources

Glossary of legal terms

Trademark infringement: This is a violation of the exclusive rights of a trademark owner. It occurs when an individual or business uses a trademark that is identical or confusingly similar to a registered trademark in connection with businesses and services in the same sector.
Genericization: This occurs when a trademark becomes the generic name to which particular goods and services are referred.
Trademark assignment: This is the legal transfer of ownership of a trademark from one party to another. The latter becomes the new owner of the mark and has exclusive rights to use, sell, or license it.
Trademark dilution: This is when a person or business uses a trademark that resembles a famous mark, affecting the consumer's perception of the famous mark.

When Is a Trademark Not Enforceable? Legal Loopholes and Challenges