Whew. You did it!
You got approved for federal registration of your trademark, and you’ve earned the right to graduate from the standard ™ and SM symbols – to that fancy little ® symbol you’ve always coveted.
(Wait, you haven’t made the switch yet? This is your sign to go do it right this minute!)
So now the world knows you mean BUSINESS.
But before you ride off into the sunset, never to worry about your trademark again…
Let’s go over what you need to do to maintain that registration.
Because you know what they say about trademark registration ownership:
If you don’t use it, you lose it.
(Okay, okay, maybe I’m the only attorney you know who’s saying that, but that’s because it’s true!)
**Real quick before we go any further – this post is legal education and information, not business, financial, or legal advice, and it doesn’t create an attorney-client relationship between us.
This is also an attorney communication under Rule 7.2 of the Rules of Professional Conduct of the State Bar of California and Business and Professions Code Sections 6157-6159.2.
Please chat with an attorney in your area to make sure you’re protecting your business.**
Does trademark protection last forever?
It can! But not without a little active participation on your end.
Unfortunately, trademark registration isn’t just one and done, and you’re good to go forever.
You have to pay attention to renewal deadlines to continue benefiting from the exclusive rights that ownership of your registered trademark allows you.
Between years 5 and 6
Mark your calendar between years 5-6 from the time registration is approved.
This is when you have to file a Declaration of Use Under §8 that indicates you’re still using the registration.
You also need to include a specimen that reflects that continued use in each class–the category of goods and/or services–your registration covers.
You’ll also need to pay the requisite filing fee. (But that’s just the cost of protecting your valuable business assets, right?)
If you miss this deadline, the USPTO will cancel your registration.
So make sure you plaster the date on your calendar, create a pop-up in your task management software, tattoo it on your arm (okay, but don’t actually do that last one)…
The point is–do whatever you need to do to keep track of this incredibly important deadline.
Every 10 years
Between years 9 and 10 after registration, you have to file a Declaration of Use and Application for Renewal Under §8 and §9.
Again, this is to verify that you’re still using the registration, so you’ll need to include a specimen for each class and pay the filing fee.
And you’ll repeat this process every 10 years if you want those juicy registered trademark benefits to keep you protected.
Just as I mentioned before, if you miss the deadlines, the USPTO can cancel your registration.
Get that deadline notification system on lock!
Stay competitive: monitor the marketplace and new trademark filings
I think we can all agree that there are a lot of new businesses dropping into the mix every day.
You’ve already done the smart thing and registered your trademark.
Now you have to maintain your competitive edge by watching the marketplace and new USPTO trademark registration filings.
You’re on the lookout for copycats, infringers, and wannabes.
I know that being a lurker probably isn’t high on your “fun ideas” list, but if someone who isn’t you starts using your registered mark, your credibility is at stake.
The last thing you want is for someone selling an inferior product or service to confuse your potential clients and loyal customers.
And if you spend all that time lurking and never have to deal with an infringer, you won’t feel like you wasted your time, you’ll just be thankful you never had to intervene.
That said…
Take immediate action if you see an issue
If a copycat does pop up on your radar, be ready and know that you have the right and the tools to stop them.
You’ve worked hard to protect your mark, and now isn’t the time to quit.
You could try reaching out to the infringer with a friendly request. It could be that they aren’t aware of their error, and your message will bring it to their attention so they can stop using your protected mark right away.
If this isn’t the first time you’ve had an issue, or if you want to cover your bases fully, you can go straight to a cease-and-desist letter drafted by an attorney.
You could even initiate legal action.
However you approach it, you have an obligation to protect your registration.
If you don’t, you could be handing your mark over to the infringers if the USPTO decides your lack of action means your mark is no longer in use by you.
Keep your trademark registration as long as you need it
Registering your trademark is an exciting step for business growth!
And while they do require some upkeep, as long as you stay on top of the renewal and maintenance filing deadlines, you can keep your trademark registered–and your business protected indefinitely.
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