Are trademark rights forever?

Trademark Law0 comments

The new PDF registration certificates from the United States Patent and Trademark Office (USPTO) aren’t as spiffy as the old paper certificates – but they’re just as valuable.

Because once you’ve received that email, you’re officially a registered trademark owner.

You deserve to celebrate!

But don’t get ready to wash your hands of the whole trademark registration biz and carry on as before.

In fact, if you want to keep your newfound trademark rights, you’ve just signed on for a whole list of trademark ownership obligations.

And if you don’t stay on top of them…

You could just as easily lose your trademark rights.

**Just before we dive in: 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.**

Maintenance and renewal filings

There are several actions you’ll need to take in the first 10 years of trademark ownership.

Between years 5-6

File a Declaration of Use under Section 8 to show you’re still using your registration. 

You’ll need to include specimens for each class of goods and services you originally listed in your application.

An optional step at this stage that I highly recommend is to:

File a Section 15 Declaration of Incontestability.

Once your trademark is incontestible, certain aspects of your registration can’t be challenged by third parties.

Aspects including:

  • The validity of the registered mark. 

The incontestable status of a trademark creates a legal presumption of its validity, making it easier for the trademark owner to defend against challenges to its registration.

  • The owner’s ownership of the mark.

In court proceedings, incontestable trademark registration is considered conclusive evidence of the trademark’s ownership.

  • The owner’s exclusive right to use the registered mark in commerce.

Incontestability provides a defense against certain grounds of cancellation, such as claims of descriptiveness or likelihood of confusion.

Between years 9-10

File a Section 8 Declaration of Use combined with a Section 9 application for renewal, including specimens for each class.

You’re once again declaring that your trademark is still in use for the goods and services listed in the registration.

Every 10 years after

You will need to continue filing a Section 8 Declaration of Use combined with a Section 9 application for renewal every 10 years. 

And, of course, there are filing fees that go along with each of the steps laid out here.

Policing your trademark 

A lot of business owners think they’re pretty much done worrying about trademark registration once they have that certificate.

But it’s not time to let your guard down yet.

Because for as long as you’re a trademark owner, you’re responsible for policing your mark and taking action if someone else tries to infringe on your trademark rights.

In fact, the USPTO literally states

You are responsible for enforcing your rights if you receive a registration, because the USPTO does not ‘police’ the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.

And if you don’t?

Your trademark registration could actually be canceled.

Here are a few ways you can police your mark:

–Set up a free Google alert to get notified whenever your trademark is mentioned online.

–Regularly run internet searches on your preferred search engine.

–Regularly search for your mark on social media.

–Check the USPTO database for new filings.

If you find an infringer, chat with an attorney for next steps – including a cease and desist letter – right away.

Proper trademark use

Once you own a registered trademark, you want to make sure you’re actually using it properly.

This is especially important on your website (aka your virtual storefront) so you don’t endanger your mark’s protection.

Here are 5 steps to take:

  1. Use the proper trademark symbol.

Should you use the ™ or ® symbol?

The ™ symbol is used for common law marks representing goods or services not federally registered with the USPTO, including marks whose registration is pending. 

In the case of unregistered marks, the ™ symbol always is correct.

The ® symbol is used for marks registered with the USPTO. 

This symbol can only be used once federal registration is granted (applying for a trademark isn’t enough) and only in connection with goods and services listed in the federal registration. 

  1. Check that the symbol is in the right place.

The ™ or ® symbol should be placed immediately following the mark.

It’s standard practice to place the symbol in superscript in the upper-right-hand corner.

  1. Check that you’re using the symbol frequently enough.

Use the symbol in the first instance the mark is used, in the most prominent use of the mark, or in the website footer.

It’s best practice to use the trademark symbol at least once per web page on which the mark is used. 

And placing the trademark symbol in any static representation that is repeated on every page is also a good idea (for example, trademark notice in the website footer).

  1. Use your trademark as an adjective only.

Your trademark should be used throughout your webpage as an adjective (aka a word that describes the traits, qualities, or number of a noun). 

Trademarks should never be used as nouns (a person, place, or thing), a verb (an action word), or as a possessive. 

  1. Update your trademark notice.

Include a trademark notice in either the website’s footer or on a standalone page that lists all trademarks (common law or registered) as trademarks of your company.

Protect your trademark rights forever

The cool thing about trademark registration is that so long as you:

–Stay on top of your renewal and maintenance filings 

–Police to protect your mark from infringement and genericide

–And use your mark properly

That registration could last forever. 

Listen to episode 30 of Uncomplicating Trademarks to learn how our Watch The Mark services do the heavy lifting for you.

Or apply to work with me if you already know you need a trademark attorney on your side.

Want to keep Uncomplicating Trademarks for yourself?

Get on the exclusive podcast list and start listening today.

I’m Nicole.

I understand both the legal world and the online business world and can bridge the gap for entrepreneurs that want to ensure all of their ducks are in a nice, neat row. Let’s protect your business so you can build your empire.

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