You have found yourself in the enviable position of having a successful business with a recognizable brand name. You did your due diligence: Before selecting your brand name, you consulted your trademark agent to make sure your idea was registrable. You searched the marketplace to make sure you would not interfere with the rights of others. You sought protection for that brand name by registering it as a trademark and you spent significant resources promoting the brand name to the public. You did everything right.
But the work in protecting a trademark does not stop there.
Once you have built up reasonable recognition and value in your brand name, it is time to consider monitoring the marketplace to ensure that no one comes along to encroach upon your rights. The reason for this is that trademark rights, once gained, can be lost. The rights are not absolute and can erode over time if they are not properly enforced.
It is helpful to think about this issue in the following terms:
Imagine you have registered and used the trademark WIDGET in Canada for several years in association with your gadget manufacturing business. During that time, unbeknownst to you, dozens of other gadget manufacturers have started marketing their gadgets under the WIDGET name.
One day, you discover one of the gadget manufacturers that has been using your WIDGET name and you demand that it cease and desist such use. Unfortunately, this manufacturer has a fairly compelling defense to your claims: Although you have a trademark registration for WIDGET covering gadgets, this registration may no longer be valid.
The purpose of a trademark is to assist consumers in identifying the source of goods or services. Once a particular trademark points to more than one source, it no longer functions as a trademark. In effect, because you waited too long to take action against the other gadget manufactures, it may be “open season” on the WIDGET trademark and anyone may be allowed to adopt it for their gadget manufacturing business.
There are several real-world examples of this phenomenon, the extreme version of which is sometimes referred to as “genericide” – i.e. when a brand name becomes the ordinary commercial word for the product (for example FRENCH PRESS for non-electric coffee-makers).
It is therefore very important to monitor the marketplace often and take appropriate action if encroachment is identified. Keeping the marketplace clear – or “sweeping it” – can help protect the distinctiveness and enforceability of your valuable trademark.
Going back to the WIDGET example, if you had been active in monitoring the marketplace and dealing with encroachment as it arose, you may have been in a better position to stop other gadget manufacturers from using your trademark.
Being proactive in brand enforcement is always a good policy. Speak with one of our trademark agents today about the steps and strategies you can implement to monitor the marketplace and keep it clear.
Questions? If you have any questions please call 613-232-5300 to speak to a professional or email us at OwnWhatsYours@aventum.law.
