Many people think that once their trademark is registered and they receive their registration certificate from the United States Patent and Trademark Office (USPTO), they own that trademark forever, no matter what. Unfortunately, that’s not how it works in the United States. Trademark owners have several duties to ensure that their marks stay active and do not get canceled. This article will explain some of those duties and requirements as well as some tips and tricks to make the trademark maintenance process easier.
First, the trademark has to be continuously used in commerce in order for it to continue to be protectable. Any period of non-use must be temporary and excusable. Secondly, there is a regular maintenance process where you must file some paperwork and pay a fee to the USPTO to show them that you are still using your trademark in commerce. Lastly, mark owners also have a duty to “police” their trademark(s) to prevent invalidating their registration.
This may sound like a lot, but there are several ways you can make sure you have the right processes in place to keep your trademark alive and strong for years to come. Before we get to those tips, I’d like to explain a bit about what policing your mark actually is.
Attorney Disclaimer: No attorney-client relationship or privilege is created by your reading this article. The article does not contain any legal advice and does not intend to give legal advice. This post is for informational and educational purposes only. If you wish to work with an attorney, contact me or another attorney to start the process.
What Is Policing Your Trademark?
Policing your mark basically means that you are required to keep an eye out for anyone using your trademark or a mark confusingly similar to it and act accordingly if that does happen. The theory behind this requirement is that if you do not watch for people using your mark without your permission, then there is no reason the court system or the USPTO should have to protect it either. While there are no hard and fast rules or steps you must take on a daily basis, the simplest way to think about it is by using a proactive approach. You must have measures in place to monitor for fraudulent uses of your mark (examples below) and take action if necessary.
It is also important to note that because federal trademark protection extends nationwide, you have a duty to police your mark throughout the entire country not just in your city or state. Lastly, you also have to police the use of your licensee(s). If you allow a licensee to use the mark and they do so in a way that violates your agreement, you need to act on it. Not doing so could end up costing you your trademark registration or result in costly litigation.
If there ever is an issue with your trademark, you are required to act on it. This can be accomplished in several ways. The first action many people take is simply asking the person or business to stop doing whatever they are doing that is infringing on your trademark rights. If that doesn’t work, you may need to send a formal cease and desist letter. The next step could be mediation or some other kind of alternative dispute resolution. Ultimately, you may need to file a lawsuit against the person or business. While this may look different for different businesses and situations, avoiding the issue is simply not an option and puts your trademark registration in jeopardy.
Easy Ways To Prevent IP Theft
- Trademark Watch Services – These services are offered by attorneys and other companies and are usually done using a computer program. The software will monitor trademark applications, website domains, social media accounts, and other sites for any marks or businesses with names similar to yours. You will receive reports on a regular basis and/or when a similar mark is found so that you can act quickly.
- Trademark Infringement Reporting Options – While you can always hope that someone will let you know if they see another person or business using your mark, that’s not always the case. Some companies have set up their own tip lines to make reporting trademark infringement easy and anonymous. Disney has a strict antipiracy policy complete with email, phone, and postal mail reporting options. CrossFit has its own webpage for reporting IP violations. You don’t have to be a global company to offer a program like this. You can simply add a form to your website or create a special email address that will streamline the process for reporting.
- Google Alerts – This one can be a lifesaver for a small business. Google Alerts is a free and easy tool that will send you an email when your trademark is mentioned on the web.
When Do I Have To Renew My Trademark?
While I would love to be able to give you a nice, easy number of years to remember, the USPTO has made the renewal process a little tricky for the first decade. Here are the dates for the trademark maintenance/renewal process as set forth by the United States Patent and Trademark Office:
- Between the fifth and sixth years after the registration date
- Between the ninth and tenth year after the registration date
- Every 10 years after that
There are various maintenance documents that you will need to file with the USPTO depending on which register your mark is on and whether the use was continuous or not throughout the preceding years. Always consult a trademark attorney if you have questions about the trademark maintenance process or requirements.
Tips To Make Sure You Don’t Miss These Deadlines
Because five years can be a long time in the small business world, many new trademark owners miss the initial renewal period. Here are a few easy ways to make sure that these dates don’t sneak past you:
- Put Them in Your Phone’s Calendar
- File As Soon As Possible During The Timeframe
- Make Sure Your and Your Attorney’s Contact Information Is Up To Date With The USPTO
Trademark Renewal Costs
As I mentioned above, the forms that you will need to file will vary depending on a couple of factors. This means the fees will vary as well. However, you can expect the costs to be somewhere between $225-350 per class of goods or services (plus attorneys’ fees) at each renewal interval if you file within the specified timeframe. The USPTO charges late fees of around $100 if you file late (during the six-month grace period), which is discussed next.
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What Happens If I Miss A Deadline?
Take a deep breath, it’s not the end of the world. Your trademark registration won’t immediately vanish into thin air. The good news is that the USPTO does offer a 6-month grace period after each of the deadlines. Filings are also considered “on-time” if they are filed on the next business day when the deadline falls on a weekend or federal holiday. However, be aware that maintenance documents filed during the grace period will incur additional fees of $100 (price at the time of writing this article) per class of goods or services.
Mariam At Law Can Help Register Your Trademark & Keep It Alive
My law practice focuses on helping small to medium-sized businesses protect their intellectual property and grow their brand. My process starts with brand and business strategy services as well as trademark registration. After that, I can help determine what kind of trademark watch service is best for your business and step in if an issue arises. But no matter where you are in the trademark process, I would love to work with you. It is always best to handle trademark infringement situations with the help of a licensed attorney.
Every business and business owner can benefit from federal trademark registration. Schedule a call with me today to learn more about why.