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11.16.2010 | Legal Advisory

Beware trademark creep! “Trademark creep” is a catchy term for one of the dangers that stalks any trademark (or service mark) that consists of only a design (as opposed to words) or of both word(s) and design elements.

For some immutable reason, the design elements of a trademark tend to evolve over time, and “creep” refers to the situation where such change is unintentional or unnoticed or both. An image file gets flipped over by mistake and the fish in the trademark that used to swim to the viewer’s right turned around and now swims to the left; words stacked vertically to begin their trademark life one day do not fit on a brochure so they get rearranged onto a horizontal line, and everyone likes the new look; colors get mixed up, the blue circle and the red square become the red circle and the blue square. Why does this happen? 

And why does it matter? It matters because while trademark registrations can last forever, they do so only if the owner makes the required periodic maintenance filings—“continuing use” after the first five years; renewal on every tenth anniversary of registration thereafter. And each one of these filings requires submission of a specimen of use, showing the mark as it is currently in use. This “maintenance” specimen must match the mark as originally registered. If it does not match, you can lose your registration, and this is a shame (as well as an economic loss) because the value of a trademark registration increases directly with time and ongoing use of the mark. The older your mark, the more protection the law gives it.

If your current maintenance specimen and your mark as it appears in the original certificate of registration are not a perfect match, you may be okay if the current specimen and original certificate “make the same commercial impression.” And you guessed it, the sameness of commercial impression is in the eye of the (examiner) beholder.

If you do miss a perfect match but keep your registration by virtue of “same commercial impression,” then you are well advised to prepare a filing to “amend the mark in registration.” This results in an amended certificate showing the current mark, but you retain the benefit of your original filing and registration dates.

One tip if you are adopting a words-and-design mark: you should consider applying to register in addition the words-only version of the mark in standard characters because a word mark registration protects XYZ, xyz, XyZ, Xyz, etc., i.e., you do not need to worry about consistency in the format of your words-only mark.

Trademark creep is international and venerable. The writer recently had occasion to visit the porcelain factory in the city of Meissen, Germany. There he saw a large display showing how Meissen’s crossed-swords trademark had evolved over time since the mid-18th century. An entire wall was devoted to about a dozen variations and the original crossed swords were barely evident in the company’s  current mark.

In any event, the guide said she was not sure how “trademark creep” could best be translated into German. 

This advisory was prepared by Nutter's Intellectual Property practice. For more information, please contact your Nutter attorney at 617.439.2000.

 

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered advertising.