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Trademark Registration Is Not The Finish Line- Snooze and You Will Lose!
© Cheryl Hodgson 2008 | Posted on September 1, 2008
Fun title: CINDERELLA GETS SANDWICHED BETWEEN PEANUT BUTTER AND BREAD
A federal registration for trademarks is vital to any business with branded goods and services. However, that pretty piece of paper may also create a false sense of security. A trademark registration is not a destination resort for brand protection; it is merely an important first step along the path to a strong brand.
“E,” the last letter of the INSURE acronym stands for the all important word “Enforcement.” There are at least three important aspects of a proper trademark enforcement program. First, the trademark owner must maintain registrations in good standing by filing “maintenance” declarations between the end of the fifth and sixth years following registration. Renewal is required at the end of ten years.
Second, a reputable monitoring service (and this does not include the ones that look like phony billings from government agencies—[Phony Bills for Watch Services Belong in the Round File], to keep an eye on new filings which conflict with your rights can be important to prevent an erosion of rights. Third, brand jacking and cyber squatting, an area we have touched upon in earlier articles, [Domain Hijacking is Brandjacking], should be monitored as part of a risk management program.
A recent ruling by the Trademark Trial and Appeal Board regarding the mark CINDERELLA for peanut butter is a perfect example of how sticky things can get when the owner fails to maintain registrations. The applicant’s predecessor had used the mark CINDERELLA for peanut butter as early as 1895. It was registered until 2001 when the registration lapsed. The owner filed a new application to regain rights. However, the Trademark Examiner denied registration on grounds the mark conflicted with a Disney mark for CINDERELLA for various food products, including candy, chocolate, cookies, pretzels, and bread. The TTAB affirmed.
While Walt Disney may have created Mickey, he did not create Cinderella. One expert in the field has already questioned the holding that peanut butter and bread are sufficiently related to justify a holding of likelihood of confusion. . If the peanut butter owner believes it has prior use and rights, it will have to fight Disney and attempt to cancel the Disney registration. The time and expense of such proceedings can often be avoided with a vigilant eye as part of Enforcement.
Whether you choose to go it alone, or use a trusted advisor, don’t file your trademark registration in a drawer and forget about it. You may wake up to find your rights are gone, and someone else has moved into your brand space.
Technorati Tags: brand management, brand protection, trademark registration, Trademarks
3 Comments »
January 26th, 2010 at 10:06 am
[...] importance of developing and maintaining a trademark monitoring program. Read our earlier post: http://brandaideblog.com. Enforcement means having a watch program in place to monitor new filings and counsel to give [...]
May 17th, 2010 at 11:12 am
I live in Canton, Ohio and my boys love the Cinderella peanut butter. My question is where here in Canton,Oh can I fine this peanut butter?
May 18th, 2010 at 10:06 am
not sure how much it is really sold. I’d try a web search first and see what comes up!