Trademarks: After Your Mark Is Registered

Trademarks: After Your Mark Is Registered

by Jane Haskins, Esq., April 2017

trademark_after.jpeg

Trademark registration provides important protection, but it's your responsibility to keep your registration active and enforce your rights. Here are some helpful tips for doing just that.

The USPTO registers trademarks, but it does not enforce them. To keep your registration active, make sure to monitor and enforce your trademark, as well as file the appropriate maintenance documents.

Enforcing Your Trademark

To maintain strong trademark protection, you must use your mark in commerce, monitor for infringing marks regularly, and take action right away if you suspect infringement. The longer you wait, the harder it may be to stop another company from infringing on your mark.

Monitoring trademark applications. By regularly checking new trademark application filings, you'll know if someone is trying to register a trademark that's similar to yours for a related type of goods or services. And you'll have an opportunity to dispute the registration. You can try to regularly monitor trademark filings yourself on the USPTO website, or you can hire a professional service to monitor new applications and publications of marks that potentially infringe on yours.

Monitoring the internet. Monitoring the internet for infringement may tell you whether another business is using a mark that's similar to yours, even if no formal registration has been filed.

Taking action. If you believe that another business is using a trademark similar to yours in a way that you think might confuse customers, get advice from a trademark lawyer. A lawyer can evaluate your situation from a legal perspective and explain your options, which might include:

  • Filing an opposition to a trademark registration.
  • Sending a “cease and desist" letter that explains your trademark rights and demands that the other party stop using its similar (or identical) mark.
  • Negotiating a resolution with the other party.
  • Filing a trademark infringement lawsuit. Lawsuits can be very expensive and are usually only filed after a letter or negotiations fail.

Keeping Your Registration Active

Trademark registrations can continue indefinitely, but you have to keep using your mark in commerce and periodically file paperwork to keep your registration alive. If you don't file the required forms, your registration will be cancelled. Here's what you need to do:

1. File a Section 8 Declaration of Continued Use and/or Excusable Nonuse. This shows that you are still using your trademark in commerce or have a good reason for not doing so. You must file the declaration and either (a) submit a specimen showing how your mark is used, or (b) provide evidence and an explanation for why you are not using your mark but still want to keep your registration active. The declaration is due between the fifth and sixth anniversaries of your trademark registration, between the ninth and tenth anniversaries of your registration, and every 10 years after that.

2. File a Section 9 Request for Trademark Renewal. This is due every 10 years, and can be filed in combination with the Section 8 declaration at that time. There is a fee to file both the Section 8 and Section 9 documents. You can file them yourself through the USPTO website, or you can use a trademark filing service to ensure that the forms are completed correctly and filed properly.

International Trademark Protection

Your U.S. trademark registration only protects your trademark in the United States. But because the U.S. is a party to international trademark treaties, U.S. registered trademark owners can file a single international application that's the first step to trademark registration in many countries. However, each country will use its own laws and standards to determine whether your trademark can be registered there. Since international registrations are complicated, your best option is to use a trademark lawyer to help.

Transferring Trademarks

If you change the name, structure or ownership of your business, you may need to formally transfer trademark ownership through a trademark assignment. Afterwards, a trademark assignment recordation should be filed with the USPTO to ensure that its public records list the correct trademark owner and contact information. Use a trademark service for assignment recordation, or file them electronically through the USPTO website.

Keeping Contacts Up to Date

The USPTO will email you a reminder when maintenance documents are due, so be sure to keep your contact information up to date with the USPTO. You can submit a change of address form through the Trademark Electronic Application System.

Missing a Deadline

If you miss the deadline for filing trademark maintenance documents, you may still have a six month grace period to submit them—with a surcharge. If it's been more than six months, your registration is cancelled and you must file a new trademark application.