Trademark: Use it or Lose It

In general, individuals file a trademark to use it, not to lose it. The objective is to protect a brand, name, logo, slogan, or any kind of trade dress that represents products or services.

However, there are some instances of trademark-squatters, or individuals who create trademarks to wait for an opportunity to use them in the future. Others are hoping to sell them forward.

We wrote about trademark squatting just weeks ago. Follow this link for the story.

USTPO (the United States Patent and Trademark Office) does not want individuals or businesses to create trademarks devoid of actual products or services.  Now, the USA Congress is stepping up to make this clear.

Updating trademark laws

Last week, the House Judiciary Committee amended H.R. 6196, the Trademark Modernization Act. The bill passed by voice vote to the full House. Among several issues, this proposed legislation will allow third parties to request an expungement or cleanup of trademarks. Third parties may go through a large list of goods or services listed on a trademark and request the courts to eliminate those not in use in commerce.

In other words, this bill will allow third parties to request a review of a trademark on the basis that the mark was never in use on some or all of the goods or services listed.

This means two things for trademark owners: First, they need to create trademarks that protect brands for actual products and/or services. No trademark squatting. Second, that owners should create and retain records of the use of the trademarks in all categories.

Good legal practices

The value of trademark commerciality is not a novelty. On the contrary, it is part of good legal practices trademark owners should follow and good attorneys encourage.

A good trademark attorney, like Marcos Garciaacosta, advises his clients to create AND USE the trademarks on all categories. Moreover, Attorney Marcos encourages his clients to keep records of their uses.

On the contrary, “legal mills” are not too clear about the commerce part of the trademarks.

Trademarks: use them or lose them

In short, this bill puts pressure to a trademark owner to use it or lose it.

The bill will go before the House for a vote. An identical bill is before the Senate Judiciary Committee. If it moves forward and becomes law, we may see the first revision to the Lanham Act in several years.

The likelihood of this bill passing is high.

ABOUT ATTORNEY MARCOS E. GARCIAACOSTA

Marcos E. Garciaacosta is a successful business and trademark lawyer serving clients in Arizona, the United States of America, and many countries around the world.

He has filed over 1000 trademarks in the USA with USPTO and many more in different global jurisdictions such as Mexico, the European Union, China, and India to name a few.

Call us to schedule your appointment at (480) 324-6378. He will guide you and represent you from the trademark research, filing, and beyond.

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