Using, Maintaining, And Protecting A Trademark
Once the process of applying for obtaining a Trademark registration with the U.S. Patent and Trademark Office (USPTO), the responsibilities of a Trademark owner are not over. After registration is complete, there are requirements that need to be met to the validity of your Trademark.
Once a Trademark is officially registered, you must use, maintain, and protect it.
Using Your Trademark
Continued use of a Trademark for commercial activity is the single most important thing Trademark owners must do to keep their Trademark valid. If, for any reason, you stop using your Trademark and there is not a clear path towards resuming use of that Trademark, then the Trademark is “abandoned” and the Trademark registration will be subject to cancelation by a third party.
There are exceptions, for instance, simply terminating use of a Trademark for a few months while you await new inventory will not be consideredabandonment. However, shelving the Trademark for a few years is most likely going to result in abandonment of the Trademark under USPTO regulations.
In addition to simply “using” a Trademark for commerce, you must:
- Use the ® Symbol. Once your Trademark registration is complete, you must always display your Trademark with the registered trademark symbol (®), which puts others on public notice that your Trademark is federally registered and protected.
- Use the Trademark consistently. Although Federal Trademark Registration provides legal protection and prevents others from using a confusingly similar mark, your Trademark must be used consistently, which essentially means displaying the same words, or the same design anywhere you use it. This helps maintain the strength of the Trademark.
Maintaining Your Trademark
Under U.S. Law, there are deadlines for certain Trademark maintenance filings. If, for any reason, you do not file these renewal documents on time, your Trademark registration will be abandoned – no exceptions, no excuses.
If you use your Trademark consistently but forget to file the mandatory maintenance documents before the deadlines, you will have restricted common-law Trademark rights.
Never miss a renewal filing deadline!
In the United States, the first Trademark renewal filing is due between the fifth and the sixth year after the Trademark registration date. The second renewal filing is due ten years after the initial registration date. After the second renewal, the Trademark registration must be renewed every ten years.
Keep in mind that the U.S. government will not notify you or remind you of upcoming renewals and, typically, does not grant deadline extensions aside from a six-month grace period that requires additional filing fees. The responsibility of meeting every deadline is fully yours. If you miss a renewal, the USPTO will automatically cancel your Trademark.
Protecting Your Trademark
Protecting your Trademark from both malicious and accidental infringers is crucial to maintaining a healthy and strong Trademark, as the more third parties using a similar word or phrase in a particular industry, the weaker that word or phrase gets when it comes to achieving public recognition. The weaker a Trademark, the narrower the scope of legal protection.
In order to protect a Trademark from infringers, you must:
- Monitor your Trademark. Under U.S. Trademark Law, Trademark owners are required to police the marketplace. You will need to ensure that other businesses or individuals are not using your Trademark or confusingly similar Trademarks without authorization. If you allow this to happen, you may eventually lose your Trademark rights; in which case, if you attempt to enforce the Trademark, infringers could defend your enforcement action by claiming that you failed to effectively police your Trademark registration.
- Expand your Trademark portfolio. When your business expands, your Trademark portfolio should expand as well. This involves filing applications for new product names or logos, or expanding the types of services and/or products covered under the original Trademark registration. Additionally, you may be required to update your Trademark specimen if your original Trademark has morphed over the years.
Work with a Trademark Attorney
That the best way to legally protect your Trademarks is to hire a skilled and experienced Trademark Attorney who can provide direction in navigating the post-registration requirements all Trademark owners must meet to maintain a valid Trademark registration in the United States.
Contact the experienced Florida Trademark Attorneys at Jurado & Farshchian, P.L. today! Call us at (305) 921-0440 or send us an email to [email protected] to schedule an initial consultation with one of our Trademark specialists.
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