IP Essentials: Q&A Series

Q What if I don’t do anything with my registered mark? A Trademarks may be abandoned through non-use or misuse. Trademark owners should be careful to continue use of their marks in a proper manner, and to police any and all unauthorized uses, to avoid any unintended consequences. If the mark will be temporarily discontinued (for example in connection with a business reorganization or relocation), efforts should be made to document the fact that the period of non-use is only temporary and that the trademark owner intends to begin use again on a certain date. Q What are the potential consequences of improper use of a trademark? A Improperly using a trademark (e.g. as a noun) may lead to the mark becoming generic for the goods and/or services associated with that mark. The following are a few examples of trademarks having become ‘genericized’: • Escalator • Kleenex • Xerox • Zipper • Dumpster • Taser

likelihood of consumer confusion, including: the similarity of the marks, the similarity of the goods and services, the relevant market and channels of trade, the sophistication of the relevant buyers, and any evidence of actual confusion. Q What is a “clearance search”? A Before adopting a new trademark, it may be prudent to perform a “clearance search.” This pre-adoption search and review allows for consideration of any potentially similar trademarks, as well as an evaluation of any potential likelihood of consumer confusion, to assist in the determination as to whether the proposed mark is suitable for use and/or registration. Q Do I need to consider international registration of my trademark? A Trademark rights in the United States are based on “first to use.” The trademark rights in the rest of the world are based on “first to file” an application. If you are planning to conduct business abroad and want to take advantage of your U.S. priority date, you need to register your mark internationally within six months of filing the trademark registration in the U.S. You can still register your mark internationally later, but you would lose the advantage of your earlier priority date.

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