Trademarks are such things as slogans, logos, and brand names that identify your brand – either product or service. There are 45 classes under which trademarks can be registered. There are product and service classes covering different categories of products and services. If you desire to use the same mark to identify your products and services that cut across different classes, you will be required to register the mark for each class desired.
Trademarks are part of the non-tangible assets of a business and must be protected to retain their value to the business.
Anything that uniquely identifies your brand can be trademarked – brand name, slogan, sound, colours, blog name, symbols, packaging, etc. Note, however, that certain generic terms and quotes for everyday purposes cannot be trademarked.
There is no requirement to register a trademark, however, without registration, a mark may only have limited protection after long use under common law rules. Imagine developing a product or service and spending a boatload of money creating marketing collateral and advertising before your launch. You go into business and then one year down the line, just as your product or service is gaining traction with your customers, you receive a letter from a lawyer telling you that you are infringing on another business’s trademark. Headache! Confusion! Unforeseen legal expenses. Rebranding costs. Nobody needs all that.😵
This is why you go through the trouble of registering your mark because the process of registration involves a search for all other marks that are the same or similar (and in the same class) to the one you want to claim for your business.
Today, though, I am jumping over the whole registration process. I am assuming that you have registered your mark. You have the ®️ next to your brand, logo, etc., putting the world on notice that you have officially laid claim to it (or TM to show your intention to claim the mark, and are in the process of doing so).
Today, the focus is on what happens after your trademark is registered. The first thing, as with all other intellectual property, is to be vigilant as to persons infringing on your exclusive right to profit from your trademark. The second thing is to use the trademark in the ordinary course of trade. Trademarks are not registered so that you can put them in your back pocket for future use and prevent any other person from using the mark.
Non-use of a mark could lead to abandonment, after which any other person can make a legitimate claim to cancel your registration and use the mark. If another person can show that your mark has not been used for over three years and there is no intention to resume use of the mark, they can apply to the trademark office for cancellation of your trademark.
The use of the trademark has to be for the goods or services specified in the registration. If over time the use of the mark changes or expands into other classes, it is important to make the necessary updates with the trademark office. Marketing efforts like sponsoring a programme simply for the mark’s visibility without any product or service to sell, or using the mark for products other than the registered product will not excuse non-use.
If a trademark has not been in use for the purpose for which it was registered for more than three years, there is a presumption that the mark has been abandoned by the owner. An interested party can then proceed with an application to cancel the registration and claim the mark for their use. The burden will be on the registered trademark owner to show that the trademark has not been abandoned.
To keep track of the use of trademarks, trademark owners are required to periodically file documents with the trademark office to show use of the mark.
So, as a trademark owner, you have two main things to do to protect your trademark – monitor its use to ensure that there is no infringement, and use it!
