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Who Moved My Brand Space?

Cinderella

A federal registration for trademarks is vital to any business with branded goods and services. However, that trademark registration is merely an important first step along the path to a strong brand.

A critical factor in creating and maintaining your brand is 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: registering with a reputable monitoring service will help keep a lookout for new filings which conflict with your rights.
  • Third: brand jacking and cyber squatting should be monitored as part of a risk management program.

A ruling by the Trademark Trial and Appeal Board (TTAB) regarding the mark “Cinderella” for peanut butter is an example of how sticky things can get when the owner fails to maintain registrations.

In this example, the applicant’s predecessor had used the mark “Cinderella” for peanut butter as early as 1895, and 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.

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, however, 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 adviser, 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.