Trademarks: After Your Mark Is Registered

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 10th 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.