Here’s a trivia question for you: Who owns the famous TESTAROSSA trademark? Your initial response was Ferrari, right? Nope.
As of the beginning of this year, that trademark is registered with the United States Patent and Trademark Office (“USPTO”) to a Dallas company for “instruments to test the authenticity of diamonds.” But, wait a minute. That was the trademark used for Ferrari’s famous car, right!?
The fate of the TESTAROSSA trademark is a cautionary tale for business owners out there. When it comes to the important and valuable asset which is one’s trademark, remember the adage “USE IT OR LOSE IT!”
This summer, a German court ruled that Ferrari could no longer claim ownership in its famous TESTAROSSA trademark. Why? Because, Ferrari has not used that trademark on automobiles for more than twenty years. In a lawsuit filed by toy company Autec AG, the plaintiff argued it should be able to use that trademark on its bicycles and not pay a licensing fee. The court agreed.
You may be asking yourself if there are similar rules here in the United States. The answer is yes. When a trademark is registered with the USPTO, the owner certifies that the mark is in use in interstate commerce. In order to keep that registration over time, the owner must pay regularly scheduled maintenance fees and recertify use in commerce. If this in not done, the USPTO will cancel the registration. Use of the trademark is required to maintain one’s ownership rights here in the United States as well.
Remember, trademark law is not designed to protect the one who came up with the mark first. The underlying objective of the law is to protect the consuming public by accurately indicating the source of a product or service.
©2017 Albert F. Davis, Esq.
This law update is intended for general information purposes only. One should not consider the update legal advice or legal opinions relating to any specific facts or circumstances. An attorney-client relationship is not created by reading this update. Please feel free to contact A.F. DAVIS LAW for further information.