Don’t Let Your Trademarks Fall “Out of Use!” Consult With Us Whenever You Give Your Website or Packaging a Facelift!

Jun 12, 2023

Sometimes your marketing material needs a fresh update. You may find that the imagery and designs you used originally weren’t as effective as you’d hoped. Or your promotional material may have served you well for years, but you’ve decided it’s time to rebrand. Maybe it’s simply that your tastes have changed. While it’s normal — and even sometimes smart — to change your marketing materials from time to time, it’s important that you don’t do so without first consulting your attorney about “continuous use”. Failure to keep up with the legal side of your intellectual property could result in your competition invalidating your trademark.

Continuous Use for Trademarks

Part of obtaining trademark registration is that it protects your trademark while they’re in “continuous use.” If a trademark falls out of use for a certain period of time — with the general rule being three years — it is considered abandoned. At that point, a competitor could obtain a trademark registration very similar to the one originally registered, and you wouldn’t have much of a case in court.

This is because brands typically don’t last forever. You may open up an ecommerce store and, after a year, decide to close it and go back to your office job. If you’re no longer using that trademark four years later, presumably you’re no longer worried about competition. That means new ecommerce stores selling to the same industry you once sold to won’t have to worry about infringing on your trademark.

What To Do With Modified Trademarks

But what if, instead of closing your ecommerce store, you simply changed your logo, packaging, or website design to suit your new branding? Unfortunately, if the trademark is too different from the trademark originally registered, the USPTO may still consider it to have fallen out of “continuous use.”

In that case, while you’re still in business, a competitor could begin to utilize a trademark that is intentionally similar to your original trademark, confusing your customer base. If the USPTO considers your old trademark abandoned, there won’t be much you can do to stop them.

So what do you do when changing your marketing materials? Can you just update your trademark registration? Well, not exactly, not unless your trademark registration application is still being processed. Once a trademark has been registered, that registration cannot be modified. You may need to obtain trademark registration again for the new marketing materials. This is where it helps to consult with your attorneys at Garcia-Zamor.

Why You Should Consult With Us Before Changing Your Marketing Materials

It may be that your marketing materials are similar enough to your original trademark that it would not warrant much of a change. However, you’ll want to schedule a consultation with your experienced intellectual property attorneys at Garcia-Zamor just to be sure. We can advise you to best protect your trademark and obtain new trademark registration for you when needed.

Rebranding can be important, but so is protecting your marketing elements so that your new branding stays truly unique. Contact Garcia-Zamor today to learn more about how we can help you or to schedule a consultation.