In today’s global innovation economy, we all know how important it is to brand our businesses. The names, phrases, symbols, and logos uniquely identifying the brand used in marketing of goods and services can seek Trademark Protection legally. Unlike patents and copyrights, trademarks must be used continuously to be enforceable. A common misapprehension governing the use of trademarks is that once registered, they can last forever without any need of renewal. However, all trademark holders must realize the fact that to keep their trademarks registered, they must both continue to use them and file its proper renewal from time-to-time as prescribed by law.
McDonald’s Loses ‘Big Mac’ Trademark Registration
Recently, McDonald’s lost a legal battle against an Irish chain over the use of its Big Mac Trademark in Europe. Initially, McDonald’s had asserted their Big Mac Trademark against Supermac, an Irish restaurant chain. They were willing to stop Supermac from expanding their restaurant chains in Europe. Supermac in turn asked the European Trademark Office to call off the Big Mac trademark for its non-use. Although McDonald’s had been using the Big Mac trademark for the previous five years, they didn’t have the correct evidence to prove it, due to which they lost their Trademark Registration in Europe.
United States Federal Level Trademark Registration
In the United States, a Federal Trademark Registration gives the trademark holders exclusive rights for the actual ownership of their brands. Federal Trademark Registrations require a declaration of excusable non-use or use which is a statement under oath, and on penalty of perjury, proving the usage of your trademark. This declaration is submitted between the fifth, and sixth years, and after every ten years of registration. Along with the declaration, a specimen presenting use in each class of registration has to be filed, which can be problematic, specifically when the use of the trademark is on the internet. For example, the United States Patent and Trademark Office (USPTO) for registration will not accept or officially agree to the use of a trademark for a product if it is just a mere advertisement. According to the USPTO, a customer should be purchasing such products or services on your website.
50% of Trademarks Not Used — As Per USPTO
In 2012, USPTO had conducted a survey of 500 randomly selected registered trademarks which showed that over 50% of those trademarks were not in use despite the filing of their declarations of use.
In November 2017, the USPTO started the Post Registration Proof of Use Audit Program to promote the uprightness and accuracy of the registered trademark. If the trademark registration includes — at least one class with four or more goods/services; or at least two classes in at least two cases with two or more goods/services; then all the registrants who file a declaration of use may need to go through this audit program.
The registrants, if selected will have to give evidence for their use in two additional goods/services per each class. Failing to respond to the USPTO in such a case will result in the complete cancellation of the trademark registration.
It is a matter of fact that yes; trademarks could be the most valuable asset of any business. Therefore, using a trademark properly and having an evidence to justify its use is necessary. Also, the trademark holders should keep in mind to renew their registered trademarks at periodic intervals as specified by law to seek hassle-free protection.