Your Trademark Is Registered! Now, Protect Your Rights

Your Trademark Is Registered! Now, Protect Your Rights

by Jane Haskins, Esq., September 2017

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Receiving a registered trademark is a big accomplishment that marks the end of a long and sometimes difficult application process.

But as satisfying as it is, trademark registration is just one milestone in your ongoing quest to protect your trademark and your brand. Now, you must defend and maintain your mark. And—contrary to what many people expect—the responsibility is on you, not the trademark office.

Here are three things you must do to protect your registered trademark.

1. Use Your Trademark

Trademark rights come from using your trademark in commerce as part of your business, not from registering the trademark. In fact, while you can file a trademark application to "reserve" your mark, you can't actually get a trademark registration mark unless you're actively using it. This means that the first step in maintaining your protection is to keep using your trademark. In fact, five years after it is registered, you will have to file an affidavit of continuous use with the PTO to keep your trademark.

Your federal trademark registration also earns you the right to use the registered trademark symbol ® alongside your mark. (In contrast, the symbol ™ means only that you claim common law trademark rights.) The ® notifies the public of your registered trademark rights, and it can deter people from unwittingly infringing your trademark. You may need to update your logo, website, product packages, labels, and promotional materials to include the registered trademark symbol.

2. Maintain Your Trademark

Your trademark lasts indefinitely, so long as you continue using it and file maintenance documents after the first five years and then after the eighth year and every ten years. If you don't file the required documents, you will lose your federal registration.

  • Between the fifth and sixth anniversary of your registration date, you must file a Declaration of Use and/or Excusable Nonuse under Section 8 of the federal trademark act. The Section 8 declaration is a sworn statement that you are still using your trademark for the goods and services listed in your registration, or an explanation of why you are not using it.
  • Between the ninth and tenth anniversary of your registration date, you must file another Section 8 declaration of use, plus an Application for Renewal under Section 9 of the trademark act.
  • Every ten years after that, another Section 8 declaration of use and Section 9 application for renewal will be due.

If you miss these deadlines, you can still file the documents within a six-month grace period, but after that your trademark will expire or be cancelled. If that happens, you can still use your trademark, but you can't get federal trademark protection without starting the registration process again from the beginning.

3. Monitor and Enforce Your Trademark

You can lose your trademark rights if other businesses begin using your mark and you don't do anything about it. “Escalator" and “zipper" were once registered trademarks, but the words no longer have trademark protection because the trademark owners didn't manage and enforce their rights.

Enforcement means keeping an eye on two things: businesses using trademarks similar to yours, and applications filed at the USPTO register similar trademarks. Similar trademarks can confuse the public and harm your brand, because they may look or sound like yours and may be used on related types of products or services.

  • You can monitor trademark applications yourself, but many trademark owners find it easier to hire a monitoring service to search filings and flag potentially similar applications. If you think your business would be harmed if a trademark were to be registered, you can oppose the application. This usually requires a lawyer's help.
  • Not everyone registers their trademarks, and a business may gain some trademark rights just by using a mark. You may find potentially infringing trademarks through word of mouth, social media, or simple internet searches for business or product names similar to yours. A lawyer can advise you on the steps to take, including sending a “cease and desist" letter or negotiating a license or other agreement.

The most important thing to remember about enforcing your trademark is to be proactive. The United States Patent and Trademark Office (USPTO) does not involve itself in enforcement, so, if you spot a potentially infringing use, it is up to you to take appropriate action.

Finally, remember a US trademark application only protects you in the United States. As a US trademark holder you have the legal right to file trademark applications in other countries under the Madrid Treaty. If you fail to do this promptly you may find a competitor owning your brand and trademark in another country with nothing you can do about it.

A registered trademark is an important asset that enhances the value of your brand. But to maintain this value, you must keep your trademark active and take the initiative in enforcing your rights.