Stay on Your Marks!
Stay on Your Marks
Maintaining Your Trademarks After Registration
We’ve talked previously about trademark monitoring in case infringers began to use your mark. We also spoke about you possibly losing your trademark protection if you do not address these infringers.
But there are more ways than one to lose your trademark protection. After registration of your mark, in addition to monitoring potential infringers, you MUST perform proper maintenance on your mark to keep it alive. Yes people, those marks can die if you leave them to themselves.
For proper maintenance, there are certain documents that must be submitted to the USPTO at certain time intervals. If this does not happen, your mark will be deemed abandoned and will result in cancellation of your registration.
Continued Use and Declaration of Use
The most important thing you must do in order to maintain your trademark protection and registration is to continue to use the mark!
If you stop using your trademark with no plan in place to resume use of the trademark, then the mark is deemed abandoned and is subject to cancellation. This usually happens in cases where a business stops using a trademark on a particular item for a few years due to lack of sales.
In addition to actually using the mark, you must file a “Declaration of Use.” This document must be filed with the USPTO between the 5th and 6th year after your trademark registration. It declares to the USPTO that you are still using your mark in commerce.
Alternatively, if you have not used your mark due to exceptional circumstance, such as a natural disaster, you can file a “Declaration of Excusable Nonuse” to show that your mark has not been abandoned. This document must be also be filed between the 5th and 6th year after registration in order to prevent cancellation of your registration.
Declaration of Incontestability
If you have been using your mark continuously for five years without interruption, you’re offered even more protection if you file a “Declaration of Incontestability” with the USPTO.
A mark that is declared “incontestable” cannot later be challenged on the grounds of validity, registration, or ownership. However, the registration can be challenged on the basis of abandonment, fraud, or that the mark has become generic. Like the Declaration of Use or Excusable Nonuse, the Declaration of Incontestability must be submitted to the USPTO between the 5th and 6th after the date of registration.
Here, we have yet another important time marker. Every ten years from registration, you must file another Declaration of Use /Excusable Nonuse AND an Application for Renewal. You must include a sample of your mark that reflects your continued use in commerce with your application. If you do not renew your registration, it will expire.
Stay on your mark and ensure your continued protection by making sure you continue to use your mark and that these maintenance documents are filed timely. If not, your mark will die, and you could possibly lose all trademark protection rights.
But, you are in luck friends...
New Millennia Legal Resources takes care of the trademark maintenance process for you. And if you’re a growing business with a growing trademark portfolio, you want to ensure that no mark is left behind. We can help you! Take the hands-off approach and contact us to learn how we can help to keep your marks protected.
Remember, at New Millennia Legal Resources, it is our primary mission to make sure that you are fully protected along this journey. Don’t go it alone in 2020! We’re always here for you.
Eloise Kaiser joined New Millennia Legal Resources mid-year 2019 as the Senior Client Liaison. She is a New Orleans native and graduate of Loyola University New Orleans College of Law. As a natural creative in her own right, she holds a special interest in business and intellectual property law.