Enforcing a Trademark

Enforcing a Trademark

Once you register a trademark, you will have legal ownership of the trademark. Additionally, you can have the U.S. Customs Service prevent the importation of goods that infringe on your trademark rights. However, if a domestic company infringes on your trademark, it is probably best to consult an attorney specializing in trademark law. The factual situation of your particular case will determine the best way to resolve the dispute. This is a decision an attorney can help you make.

Renewing a Trademark

For a trademark registration to remain valid, a Declaration of Use must be filed:

  1. between the fifth and sixth year following registration, and
  2. within the year before the end of every 10-year period after the date of registration. (The registrant may file a Declaration within a six-month grace period after the end of the sixth or every tenth year by paying an additional fee)

Assuming that a Declaration of Use is timely filed, registrations granted PRIOR to November 16, 1989 have a 20-year term, and registrations granted on or after November 16, 1989 have a 10-year term. This is also true for the renewal periods; renewals granted PRIOR to November 16, 1989 have a 20-year term, and renewals granted on or after November 16, 1989 have a 10-year term.

Registrants must renew their trademarks within the year before the expiration date of a registration (or within a six-month grace period after the expiration date by paying an additional fee). There is no limit to the number of times a trademark can be renewed, as long as use of the trademark continues by its owner.

 

 
  • Trademark Statement of Use
    To register a trademark with the U.S. Patent and Trademark Office (USPTO), you must prove that you are actively using your trademark to sell goods or sell or advertise services. In other words, you cannot register a trademark simply to tie up the rights to it. You must actually use it in commerce...
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  • Requirements for Filing Statement of Use
    Along with your Statement of Use, you must provide to the USPTO: (1) a filing fee for each class of goods or services, and (2) a specimen showing use of the trademark for each class of goods or services that you originally selected. Your trademark can only be registered in those classes and those...
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  • A Word About Trademark Specimens
    A trademark specimen is a real-world example of how you are using your trademark on goods or in the offer of services. A specimen is more than just a picture of your trademark or logo. For goods (products), acceptable specimens include labels, tags, packaging material, instruction manuals and...
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  • Time Frame for Filing a Trademark Statement of Use
    To complete the trademark registration process, you must file a Trademark Statement of Use within the following time period:
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  • Searching for Conflicting Trademarks
    While you are not required to search for conflicting trademarks, it is highly recommended. Should there be any existing trademarks already federally registered that conflict with yours, your application can be denied and your filing fees would not be refundable. Additionally, since trademarks can...
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  • Legal Requirements for Registering Your Trademark
    There are four basic requirements for filing a trademark (or service mark) with the U.S. Patent and Trademark Office (USPTO). The trademark must be applied for under the actual owner's name. The owner of the trademark is the person who controls the nature and the quality of the goods sold or the...
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