While filing for trademark registration provides legal protection and usage rights, it is the responsibility of trademark owners to enforce those rights and maintain the active status of their marks.
In order to protect your registered trademark, you must continue to use the mark in commerce, monitor it consistently for potential infringement and take the necessary actions to stop any infringers. If you don’t know that infringement has occurred—or wait too long to take action—it can hurt your trademark protection and make it more difficult to stop another company from infringing on your mark.
To effectively monitor your marks, you should establish processes for monitoring in two areas:
Trademark applications — to ensure that no one else is trying to register a similar trademark for related goods or services, new trademark application filings need to be monitored regularly. You can either do this yourself on the U.S. Patents and Trademarks Office website or contract with a professional service to monitor new trademark applications that could potentially infringe on your existing marks.
Internet — setting up Google alerts for each of your registered trademarks will let you know if someone else is using one of your marks or something similar to it.
If you suspect trademark infringement by another company, your first step should be to contact your IP attorney. Counsel can then evaluate your situation and provide you with options, which may include:
- Filing an opposition to a new trademark registration.
- Sending the offender a “cease and desist” letter demanding that they cease using your mark or a mark similar to it.
- Resolving the matter via negotiation.
- If the demand letter and negotiation fail, filing a trademark infringement lawsuit may be your only option.
Maintaining Your Trademark Registration
You must keep using your trademark in commerce and file paperwork periodically in order to keep your registration valid. If the required forms are not filed, the registration will be cancelled, leaving your mark open for competitors to claim. The filing requirements include:
Section 8 Declaration of Continued Use and/or Excusable Nonuse. This filing confirms that the mark is still in use in commerce or, if it is not, provides a good reason why it is not. With the declaration, you must include a specimen showing how the mark is being used or provide evidence and an explanation why it is not in use and why you still want to keep the registration active. Due date: between 5th and 6th anniversaries of your registration and every 10 years after that.
Section 9 Request for Trademark Renewal. This filing is the formal request to renew your mark and can be filed with the Section 8 declaration. Due date: every 10 years.
Remember that registering your trademark with the USPTO only provides protection within the U.S. If you are using the mark in other countries, you will need to follow the process for registering your mark in each country. Since these registrations can be complicated, you should consult with your IP attorney for help.
Williams Mestaz, L.L.P., provides strong legal advocacy for companies involved in business lawsuits, including IP infringement litigation. We are known for using our skills, experience, and cutting-edge technology to get great results, whether after trial or through a favorable settlement. Call us today at (602) 256-9400 and schedule an appointment to meet with us about your case.