Registering a federal trademark is a process that involves filing an application with the US Patent & Trademark Office ("USPTO"). If the process goes smoothly, without any complications or legal challenges, the process generally takes about a year.
The registration is complete when the USPTO sends out what is called a "Certificate of Registration." Having a certificate of registration allows the holder to begin using the trademark symbol ® on the goods, packaging, correspondence, and advertising.
However, a trademark registration must be maintained. In general, maintenance of a trademark requires four sets of actions:
● Continued use of the trademark or service mark in commerce
● Consistent use of the trademark
● Maintaining filing status with the USPTO
● Defense of the trademark from infringement and dilution by others
After getting your certificate, it will be your responsibility to maintain your trademark registration. However, it would be more convenient for you if you are aware of what you are doing. Consult a proven trademark attorney if you have questions about how to maintain your trademark after registration.
But first, here’s a list of the step by step procedure to help you get started:
Step #1: Use It In Interstate Commerce.
As noted, the first step in maintaining your trademark is to continue using the trademark in commerce. As a legally protectable asset, a trademark exists as long as the trademark is used in commerce. This involves affixing the trademark to the goods themselves, using the trademark on the packaging, advertising, signage, correspondence, and website content.
Step #2: It Is All About Consistency.
The second set of actions that must be taken to maintain a trademark is to use the trademark consistently. The purpose of a trademark is to create in the minds of consumers a linkage between the mark and the products or services that are being provided.
A trademark is a logo, symbol, word or design that signifies a commercial source for certain goods or services. Trademarks generally signify quality. If the trademark is not used consistently, the trademark will stop functioning as a trademark and is at risk of being lost.
Take, for example, the stylized "M" used by the McDonald's fast-food restaurant chain. When consumers see the "golden arches," they think "McDonald's" and then "good food." However, imagine that McDonald's does not use the stylized "M" consistently. Imagine that on one location sign, the "M" is used, but on another sign, a golden stylized "McD" is used and, on yet another sign, just "Donald's" is used.
Under those non-consistent uses, you will likely confuse your consumers. The original trademark will lose its significance and stop functioning as a trademark.
Step #3: File Declarations To Prove Continued Use Of Trademark.
The third set of actions that must be taken to maintain a trademark is to make periodic filings with the USPTO. These filings are called Section 8 Declarations under the trademark law. These declarations demonstrate to the USPTO that there has been continued use of the trademark in interstate commerce (or proof of excusable nonuse).
The first filing is due between the fifth and sixth year after receipt of the certificate of registration. Then, another filing is due between the ninth and 10th year and, then, a filing must be made every 10 years thereafter.
As long as the trademark is used in commerce and the renewal filings are made, a trademark can last indefinitely.
Step #4: Defend The Trademark From Infringement And Dilution.
The fourth set of actions that must be taken to maintain a trademark is to defend the trademark. Defense of a trademark involves preventing the use of the trademark by competitors or other third-party infringers.
The following is a list of a few of the essential actions to take in order to defend your trademark:
● Use a "market watch" service or other services to monitor the market for infringing uses of the trademark.
● Constantly check the USPTO's Official Gazette for attempts to register trademarks that are similar.
● Challenge any potential registration of a similar trademark.
● Send cease-and-desist and demand letters if an infringement is found.
● Start litigation to protect against infringement and dilution.
● Consult experienced trademark attorneys for assistance.
In Conclusion
Designing a trademark that stands out and engraves a connection to your products or services when seen is only half of the battle. Maintaining the status of your trademark as you continue to conduct business is equally as important.
To recap, the first step is imperative to ensure that your trademark is being used in interstate commerce. It should be affixed to either the product itself or on the packaging, advertising, signage, and in correspondence with distributed content. The next aspect to account for is that the trademark is being consistently used.
Also, remember to file Section 8 Declarations to the USPTO to demonstrate the continued use of the trademark. Also, ensure that you are defending the trademark by preventing the incorrect or uncontrolled use of it by unlicensed third parties. Lastly, it’s wise to hire a Colorado trademark attorney to help you maintain your trademark registration.
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