The Importance Of Policing Your Trademark
So you’ve gone through the registration process and have come out with a trademark registration, now what? For most people, this is where they end the process. They use their trademark and pay the renewal fees, but what they fail to do is police their trademark. This can land them in a situation where an otherwise distinctive trademark loses its distinctiveness and can lead to a limiting or loss of trademark rights. How does this happen when a registration gives you exclusive right to use the trademark in Canada? Unfortunately, it is a common assumption that the Trademark Office will police the mark for you, but this is not the case. Your registered trademark may be the basis of an objection for confusion during the prosecution of other trademark applications, but if the other party is able to successfully argue that confusion is unlikely to occur then their trademark will proceed to the advertisement stage regardless of whether or not there is the probability of actual confusion. And what about trademarks that people choose not to register?
Policing your trademark can help to prevent competitors from using confusing marks which can limit your trademark protection. If the public associates any portion of your trademark to the general goods or services associated with it, then that portion of your trademark is no longer protectable. As an example, a trademark for STANDBY is registered in association with running shoes and a competitor begins using a trademark (unregistered) for STANDON. The STANDON brand becomes popular very quickly and the public begins to associate the portion of the mark STAND as relating to shoes in general. As a result STANDBY has lost its distinctive quality and it is likely not possible to prevent other shoe companies from using STAND within their own trademarks. In this example, the STANDBY trademark may still provide some protection, however, it is severely limited as a result, of public perception.
A failure to police your trademark may also cause a complete loss of your trademark rights. This occurs when your trademark becomes popular enough that is it used by the public in a generic fashion. Examples include ZIPPERS and ESCALATORS which were once considered to be trademarks but have since become synonymous with the products they described. Brands such as XEROX and KLEENEX are in a constant struggle to prevent their trademarks from becoming generic.
Policing your trademark is just as important as registering it, however, this is often overlooked to the detriment of the trademark owner. Internet searches, Trademark Office searches and your trademark agents can be beneficial in providing you with information for the protection of your trademarks.