The Careful Timing of Trademark Truncation
A recent stroll through a big box store opened my eyes to a brand of steel toe boots I hadn’t encountered before, take a look at the CAT that will be protecting my son’s toes this Summer:
By the way, I love how the brand intelligently employs both both versions (full and truncated) of the brand name on the goods and packaging for the goods. It permits Caterpillar Inc. to own trademark rights in both versions without risking a loss of trademark rights through abandonment when a truncation might otherwise lead to a complete phase out of the longer version.
Caterpillar Inc. also has built an impressive mountain of trademark protection for both word mark and stylized versions in many different classes of goods and services; the brand recently has asserted an impressive scope of rights. It also clearly thought about and began executing a truncation strategy more than nearly seventy years ago, with this very early CAT registration. Sad we won’t be seeing (again) bikes, trikes, or wagons, at least in the near future, it appears.
To be clear, brand owners should know there is no legal right for a business to be able to truncate a longer brand name, nor can one assume all brand extensions are legally viable.
As we have discussed before, a truncation strategy can make enormous sense, in part, because truncation yields a broader right (if allowed). However, it also can lead to more third party objections since there is necessarily less other matter available to help differentiate from others.
For these reasons and others, it is important for brand owners to jump in with both boots and move on the appropriate level of due diligence, not assume that the path for truncation and/or brand extension is a clear one (without the need for heavy excavation of the existing trademark landscape).
via DuetsBlog http://bit.ly/1Uf19k9
May 8, 2017 at 07:55AM