TOTAL Bummer Man

On October 15, 2012, in Trademarks, by Brian A. Hall

UnIP (UnIntellectual Property): Trademark for “TOTAL”

Although this decision comes from Romania, namely the High Court of Cassation and Justice, it reinforces that trademark rights are limited to the mark as used. In this case, GlaxoSmithKline sought to cancel Total France’s ownership and registration for TOTAL. Total France entered into a license agreement with Colgate-Palmolive, which allowed Total France to use TOTAL only as COLGATE-TOTAL. Interestingly enough, Colgate-Palmolive had its own registration for COLGATE-TOTAL for use in connection with toothpaste. The Court ultimately held that Total France’s use of TOTAL only as part of COLGATE-TOTAL was insufficient to establish use or continued use of TOTAL in and of itself.

Therefore, Total France is presumably left a mere licensee of Colgate-Palmolive and does not own any trademark of its own for TOTAL. The lesson for trademark owners is that they need to use their trademark, in and of itself, in order to maintain trademark rights. This applies equally in the United States. See 37 C.F.R. §2.72 (Two marks are considered to be materially different if the substitution of one for the other would be a material alteration of the mark). While it is common to incorporate a trademark protected term into other products or services, trademark law requires that the trademark be used in and of itself if it is to remain a protectable trademark and not morph into a mark with additional components.


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