By Megan St. Ledger | Successful branding strategies rely on trademarks to protect a company’s product names and logos. But as a company expands its product lines, additional registrations may be needed to secure the full protection afforded by trademark laws.
When applying for a trademark, the trademark owner must identify the classes of goods and services where the mark is actually used according to a classification system provided by the Patent and Trademark Office. Once granted, trademark registrations are evidence of the validity of the mark and exclusive ownership of the mark for the classes of goods and services listed in the registration. After five years of continuous use, a trademark owner may apply to have the mark declared incontestable.
An incontestable mark is afforded even greater protection under trademark laws and is easier to enforce. However, the presumption of incontestability only applies to the goods and services listed in the registration. If the registration is not updated to reflect actual use of the marks, the company may be banking on trademark protections that do not exist.
Take for example the ever-expanding branding of collegiate athletics. The Ohio State University began using the “Buckeyes” mascot for sporting events in 1878, and a century later, you would be hard pressed to name a product upon which Ohio State has not licensed the use of its marks. A Buckeye fan may wake up in Ohio State pajamas on bed linens emblazed with the Ohio State logo, step into a pair of Ohio State slippers, and walk downstairs to read the sports section while drinking out of an Ohio State mug and keeping warm under Buckeye Snuggie.
The scope of goods and services now associated with the Ohio State family of trademarks is a far cry from the initial registration of the “Buckeyes” mark in 1975 in the category of college “sport exhibition events and recreation programs.” In order to protect its marks, the university filed subsequent registrations to cover the constantly growing array of Buckeye-branded products. From its initial registration of the “Buckeyes” mark for use in college sporting events, Ohio State has filed additional trademark registrations for the “Buckeyes” mark in numerous other classes of goods and services.
In the absence of updated registrations, the university would still have been free to litigate infringing uses of the “Buckeyes” mark. However, without registrations accurately reflecting the goods where the mark is used, Ohio State would not be able to rely on principles of incontestability. Updating registrations is neither difficult nor expensive and ensures that a company’s marks have the greatest protections in all areas in which they are used.
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