So you’ve just gotten your U.S. trademark registered. Congratulations! Now there are some things you should know…
1. The trademark needs to be maintained. Between the 9th and 10th year after registering your trademark, and every 10 years thereafter, you must file a combined “Declaration of Use and Application for Renewal.” This might seem like a long way off, but therein lies the danger: deadlines can sneak up on you.
One advantage to working with an attorney who does a lot of trademark work (as opposed to one who does this work only occasionally) is that we typically have an automated system for keeping track of deadlines and reminding clients of renewal periods.
2. Put the world on notice that you have a registered trademark. This is easily accomplished by attaching the “registered” symbol to your trademark, especially in places like your website. (In MSWord, simply enter (R) and the program will automatically convert your text to the ® symbol.)
This symbol tells the world that you have a federally registered trademark, and whoever infringes upon it can’t claim that they didn’t know. If you haven’t yet earned the ®, you can assert your common law rights to the trademark by using a ™ symbol. Less formally, use your trademark or service mark in all capital letters—again, to put the reader on notice that you intend to use those words as a trademark.
3. Don’t “verb” your trademark. Even if you’re not being as formal as using the ® or ™ symbols, when you’re writing about your company or product, such as in a letter or email, don’t use your trademark in a verb form. We hear things like “I’ll Xerox this” or “Let me Google that” all the time, but such usage is actually a diminution in the value of those trademarks; it undermines their value and leads to them becoming generic. (“Aspirin” was once a trademark!)
4. Document everything. Maintain clearly dated files and send them to your attorney in case your own copies get corrupted. Documentary evidence of your trademark in commerce—advertisements, initial and periodic purchase orders, invoices, etc.—show not only that you commenced use of the trademark as of the date you claim in your application and registration, but also that you’ve continuously used it since then. This is helpful in case you ever need to enforce the trademark right or someone claims their similar trademark is superior to yours.
5. Keep track of your sales & advertising costs. This shows earnest investment in the trademark, and might be useful when enforcing (or defending) your mark in the future.
6. Enforce your trademark. Keep an eye out for potential infringements, whether inadvertent or purposeful. The rights of your trademark can be diminished or diluted if other people are using it. Maybe a mom-and-pop venture on the other side of the country doesn’t really impact your revenue, but if someone else comes along later, and they’re a real competitor, their competition is strengthened because you allowed that mom-and-pop shop to use your trademark for so long.
Sometimes, you can to allow others to use your trademark. Usually, this happens when they make something entirely different from you. In that case, you can enter into an agreement with them to coexist. With that paper trail, you’re still protecting yourself so you can show later that you were diligent in making sure no one else actually infringed upon your trademark.
If someone is using your trademark without having registered with the United States Patent and Trademark Office (USPTO), you can simply have your lawyer send them a demand letter, asking them to stop using the trademark. However, if they’ve registered a potentially conflicting trademark with the USPTO, and you catch it in time, your attorney would need to bring an opposition or cancellation proceeding with the Trademark Trial and Appeal Board to prevent or cancel their registration; that’s a much more involved process.
7. Keep your registration updated. If your company experiences any significant changes, such as new ownership or address, make sure your trademark registration is amended accordingly.
8. Beware of scams. You might start receiving unsolicited mail from companies pretending to be associated with the USPTO. Many scam artists are eager to take your money now that you have a registered trademark. They often send letters that try to make you fearful of losing your rights unless you pay some kind of filing fee. If you receive such letters, send them to your attorney.
*9. Renew Your Registration. Between the 5th and 6th anniversary of registration, you must file a declaration that you are still using the mark in commerce. This is also your chance to have the mark deemed “incontestable”, which is a great way to fend off most attacks by disgruntled third parties against your registration. You also have to renew the registration, and show that you’re using it in commerce, between the 9th and 10th anniversary, and every 10 years thereafter (we should all live so long!). You should mark your long-range calendars, or work with counsel who keeps track of trademark renewals, because failing to renew results in USPTO deeming the registration to be abandoned. You’ll want to avoid that tragic result after all your hard work at building a brand!
Our office focuses on trademarks. We can help you protect your trademark rights.
*Edited 3/3/16: #9 added from the advice of a colleague.
