Numerous people believe that trademark rights can be “abandoned” or lost if the trademark proprietor fails to expostulate to infringing uses of the mark, but that isn't entirely accurate. There's a great deal of query in the courts with respect to the effect on one’s trademark rights of a failure to make infringers. Some courts maintain that it makes no difference whatsoever. Other courts have concluded that the failure to make can affect in the abandonment or loss of trademark rights. And still, others have set up a middle ground in holding that the failure to make can reduce the strength of a mark but not affect in total abandonment. At the onset, it's important to keep in mind that this issue enterprises whether the failure to make one infringer has any bearing on the strength of a trademark proprietor’s rights with respect to a different infringer or the world at large. There's a separate and distinct issue that arises when a trademark proprietor fails to make an infringer for a time and also latterly tries to pursue that same infringer. This ultimate, separate issue concerns the doctrine of laches, which isn't the subject of this post.
What Is Trademark Abandonment?
Trademark abandonment, in general terms, and occurs when a mark proprietor discontinues use of the mark with no intent to renew use. Disuse for a period of three times creates a presumption of abandonment.
Abandonment also occurs when the mark proprietor takes action that causes the mark to come general. 15U.S.C.§ 1127. According to these strict delineations from the Lanham Act, the question ought to be whether the failure to make infringers makes a mark general( because the failure to make is presumably not accompanied by a closure of use). But this isn't really how all courts have treated the issue.
What Is the Effect of a Failure to “Police” a Mark or a Failure to make Infringers?
Courts have taken three introductory approaches to this issue
Failure to make Is inapplicable to Abandonment This explanation is grounded on the notion that an infringing defendant shouldn't be let off the hook just because some other infringer wasn't pursued for its wrongdoing. This explanation is also supported by policy enterprises if a mark proprietor is hovered with a loss of rights for not executing every infringer, it would clog the court system with petty controversies brought for no other purpose than to avoid abandonment. This approach has been followed by civil courts in California, Florida, Georgia, Illinois, New York, and also the Trademark Trial and Appeals Board.
Failure to make Results in Abandonment by Making the Mark Generic This proposition holds that when a trademark proprietor has failed to pursue infringers for so long that the mark gests wide use by challengers and guests to the extent that it has come the general name of a product, also the failure to make can affect in abandonment. It's important to note that this proposition doesn't inescapably correct a mark proprietor for the failure to make a single infringer; the failures to police and the compass of allowed infringing uses must be much more wide. This approach has been followed by courts in Illinois, New York, and also the Trademark Trial and Appeals Board. Failure to make Impairs the Strength of a Mark This proposition is really not about abandonment( as a total loss of rights) at each, although courts haven't foreclosed the possibility that the loss of strength could be so severe as to reach that position. This proposition is presumed on the most abecedarian aspects of trademark law a trademark signifies a connection in the mind of consumers between a particular mark and the products or service of a particular company. From this perspective, the allowed use of the mark by challengers would serve to lessen this connection in the minds of consumers — the more significant the infringing uses, the further muddled( and lower strong) the connection becomes in the minds of consumers. This approach has been followed by civil courts in the 2nd, 5th, 6th, and 11th Circuits, and also the Trademark Trial and Appeals Board.
So Do I Have to Sue Infringers or Not?
There's no easy answer to this question. The short answer is “No,” a trademark proprietor doesn't have to sue every single infringer, and the failure to do so in an insulated case of violation will probably not affect in abandonment. Still, the failure to take action in the face of wide violation could significantly impact a mark proprietor’s rights. It's for this reason that numerous larger companies that invest heavily in their trademark portfolios err on the side of caution in pursuing infringers. This is because there's no bright- line rule regarding how important infringing use is too important and it may be more provident to address implicit infringers when they first begin using a confusingly analogous mark, as opposed to staying until the use becomes wider and the infringer is more invested in the mark. When it comes to policing a mark by executing infringers, numerous guests inaptly believe that the failure to take nippy action will automatically lead to abandonment, but the issue is far more nuanced than that. The prudent business proprietor should be apprehensive of infringing uses and will take applicable action when necessary. Still, careful analysis of the infringing uses, the frequencies of the mark in the request as a whole, and other factors are helpful in casting a brand protection strategy that's defensive of the trademark proprietor’s rights while not being unnecessarily.