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~ Trademark and Copyright Law Updates in Indiana

Indiana Intellectual Property Blog

Tag Archives: Genericness

Avoiding Loss of Trademark Rights

05 Saturday Jan 2019

Posted by Kenan Farrell in Intellectual Property, Trademark

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Abandonment, Genericness

You’ve spent time, energy and money developing and protecting your trademark …possibly even obtaining a federal trademark registration. Now what? Going forward, you need to be careful to avoid several pitfalls that can result in the loss of your valuable trademark rights. Set forth below are several important considerations you should think about to avoid losing your rights as you continue to use your trademark and enforce your trademark rights against third parties:

1. Failure to use the trademark. Since trademark rights are based on use, a trademark owner must continue to use the trademark properly in order to avoid forfeiture of rights by abandonment. Non-use occurs when a trademark owner stops using the mark and does not intend to resume use. Further, intention not to resume use may be inferred from a trademark owner’s failure to use the mark for three consecutive years. Once a mark is deemed abandoned, all rights to the trademark are lost.

2. Authorizing uncontrolled use of the trademark. Trademark rights can be lost if you license the trademark to others but don’t take adequate steps to monitor the style and quality of products or services associated with the trademark. After all, trademark law grants you exclusive use of the trademark in exchange for giving the consuming public a reliable indication of quality. If the level of quality falls below a certain level, you may be setting yourself up for cancellation of your trademark right.

3. Failure to enforce your rights against infringers. If you continually allow known infringers to violate your trademark rights, you effectively give up the right to challenge their use. While this might not result in cancellation of your registration, you are undermining your trademark by wilfully adopting a very narrow scope of protection.

4. Generic use. Generic use refers to the situation in which a trademark becomes so familiar that the distinction of the mark diminishes.  We’re all familiar with the following trademarks which were allowed to become generic over time: aspirin, escalator, linoleum. Rights to those trademarks were lost because appropriate steps were not taken to prevent the public from coming to regard the marks as generic products or services, rather than particular brand names.

If you have concerns about whether you are adequately protecting your trademarks, consider consulting a trademark professional who can help you implement procedures for maintaining and enforcing your rights.

Indiana Trademark Litigation Update – Williams Industries v. Tervis Tumbler

27 Monday Jun 2011

Posted by Kenan Farrell in Indiana, Intellectual Property, Litigation, Southern District of Indiana, Trademark

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Common Law Unfair Competition, Debra McVicker Lynch, declaratory Judgment of Non-Infringement, Declaratory Judgment of Unenforceability, Fraudulent Procurement of Trademark Registration, Genericness, Sarah Evans Barker, Tortious Interference with Business Relationships

Williams Industries, Inc. v. Tervis Tumbler Company

Plaintiff, Williams Industries, is based out of Shelbyville, IN and designs/manufactures a variety of products including plastic drink tumblers.  Among their products are the 12 oz. and 14oz. Tritan™ double wall tumblers.  Plaintiff has an ongoing business relationship with Hit Promotional Products, a seller of many products, including the Tritan™ tumblers.  Defendant, Tervis owns two copyrights regarding design and style of plastic drink tumblers.  Tervis sent a cease and desist letter, claiming Hit “deceived and misled customer who pay for

[its] products into believing that such products are those of Tervis… [t]his attempt to profit off of Tervis’ goodwill is a violation of state and Federal trademark and unfair competition laws.” In response, Hit removed the Tritan™ tumblers from their website.  Plaintiff is requesting the cancellation of Tervis‘ trademarks due to genericness, unenforceability, and fraudulent procurement; as well as compensation for damages resulting from the alleged tortious interference.

Court Case Number: 1:11-cv-00860-SEB-DML
File Date: Monday, June 27, 2011
Plaintiff: Williams Industries, Inc.
Plaintiff Counsel: Dwight D. Lueck, Jennifer Lynn Schuster of Barnes & Thornburg LLP
Defendant: Tervis Tumbler Company
Cause: Tortious Interference with Business Relationships, Cancellation of the ‘577 Mark for Fraudulent Procurement of Trademark Registration, Cancellation of the ‘577 Mark for Genericness, Request for Declaratory Judgment of Unenforceability of the ‘577 Mark, Request for Declaratory Judgment of Non-Infringement of the ‘871 Mark, Request for Declaratory Judgement of Unenforceability of Tervis’s Alleged Trade Dress, Common Law Unfair Competition,
Court: Southern District of Indiana
Judge: Judge Sarah Evans Barker
Referred To: Magistrate Judge Debra McVicker Lynch

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