The Importance of Maintaining Trademarks After Registration

Getting a trademark registered can be a significant undertaking and is certainly an achievement for your business when finished. Not many people know that once your registration is granted you must maintain and care for your mark. This post-registration diligence is a very important aspect to building and keeping value in a registered mark.

Most importantly, registered marks are only enforced by the mark owner themselves. This post will provide an overview of the trademark maintenance timeline, as well as highlight some important information about monitoring and enforcement of your mark. 

Trademark Maintenance Timeline

Registration

After your mark is registered, the clock starts ticking for when you must file maintenance documents. Five years after the registration of your mark, you will receive a courtesy notice from the United States Patent and Trademark Office (Trademark Office). This notice gives you one year in which a Section 8 declaration of use needs to be filed to renew your registration. Your trademark attorney will know what steps need to be taken in order to properly complete a Section 8 declaration. A Section 8 declaration is a document the USPTO uses to confirm that your mark has been in use during the five years since you registered it. 

Incontestability

This is also the time to file a Section 15 declaration of incontestability, if your mark has been in continuous use for the five years since registration. If your Section 15 declaration of incontestability is accepted, your mark becomes incontestable. Incontestability makes your mark stronger and easier to enforce. For example, if you own the mark “Axon” for selling fruit, and a competitor starts selling fruit with the name “Axe On”, you will probably want to enforce your mark against this competitor. You may have to prove that your mark is valid and registered for the goods or services that you sell, before a court will enforce your mark, which takes time and can be expensive. However, you generally don’t have to prove validity and registration if your mark is incontestable. 

Renewal & Upkeep

At the nine-year mark, you will receive another courtesy notification from the USPTO indicating that you have one year to file the required registration renewal forms. At this point, it is time to file another Section 8 declaration, as well as a Section 9 application for renewal. After your Sections 8 and 9 filings are accepted, your mark will still need to be maintained but less frequently. Your mark will stay live from this point forward, so long as Sections 8 and 9 filings are properly completed every ten years.

Monitoring and Enforcement

Failure to enforce your trademark can lead to your mark becoming weaker, and thus harder to enforce against major infringers in the future. For example, say you sell ice cream under a registered mark. If someone infringes your mark, but it is only a small “mom and pop” shop, you might not be inclined to pursue them for infringement, depending on how much perceived direct damage they can do to your brand.

However, if another potential infringer comes along, say a true competitor, your mark may have been “diluted” to the point that you cannot enforce against the new infringer. In a situation like this, some courts will say that your mark has “lost its distinctiveness.” Failing to enforce a mark to the point that it loses its distinctiveness can result in the cancellation of your trademark.

For these reasons, it is important to set up a monitoring and enforcement strategy for your mark. Regularly monitoring the market place will allow you to spot infringers early, and give you the opportunity to enforce your mark in a timely manner. Enforcing early will substantially reduce the amount of damage that infringers can do to your business and your legal rights. If you are interested in monitoring your marks, talk to your trademark attorney about setting up a monitoring and enforcement strategy.

Conclusion

    Registering a trademark often takes a substantial investment of your time and resources, so properly maintaining your mark is of tremendous importance to your business. To maintain your mark with the Trademark Office, remember to keep track of where you are in the timeline for filing, and watch for communications from the Trademark Office informing you of any upcoming requirements. A monitoring and enforcement strategy is another important element in maintaining your intellectual property rights. Monitoring for infringers will allow you to enforce your rights early, protecting your mark and your business.

If you have any questions about the trademark maintenance timeline, trademark enforcement and infringement actions, or setting up a monitoring and enforcement strategy for your mark, please feel free to contact Benjamin C. Rothermel, Esq. using the form below!

Written by Benjamin Rothermel and Connor Jaccard.