How Can I Make Sure My Trademark Remains Protected?

To maintain your trademark registration with the United States Patent & Trademark Office (USPTO) and ensure its protection in the marketplace, you should:

• Use the trademark continuously in commerce.
• File the appropriate trademark maintenance documents with the USPTO between the 5th and 6th anniversary of the trademark registration.
• Renew the trademark registration every ten years.
• Monitor your trademark and actively (not aggressively) enforce against infringing uses
• Update the USPTO of any changes in ownership or contact information.
• Respond to USPTO Office Actions or other official correspondence from the USPTO in a timely manner.

Note that this is not a comprehensive list, and it is recommended to consult with one of our trademark attorneys for personalized guidance on maintaining and protecting your trademark.

Trademark Maintenance

Between the 5th and 6th year of a trademark registration, you or your business (e.g. the trademark owner) must file a Declaration of Use or Excusable Nonuse, also known as Section 8 Declaration, to demonstrate that the trademark is still in use in commerce and to show that you have not abandoned using the trademark in the marketplace. This Section 8 Declaration must be filed along with a specimen (or evidence) showing how the trademark is being used in commerce, and the required fee must be paid to the USPTO. Failure to file a Section 8 Declaration and pay the required fee could result in the USPTO automatically cancelling your trademark registration.

Between the 5th and 6th year anniversary of the trademark registration, you may also file a Declaration of Incontestability, also known as Section 15 Declaration, with the USPTO. A Declaration of Incontestability provides evidence that your trademark has been in continuous use for five years and that no one has successfully challenged its validity during that time period.

Filing a Declaration of Incontestability can provide additional legal benefits, such as:

• Establishing conclusive evidence of the validity of the trademark.
• Limiting the grounds on which the trademark may be challenged.
• Improving the enforceability of the trademark.
• Monitor and enforce against infringing uses of the trademark.

However, filing a Declaration of Incontestability is optional, and it is not necessary filing to maintain your trademark registration with the USPTO.

Trademark Renwal

Between the 9th and 10th anniversary of a trademark registration, you or your business (e.g. the trademark owner) must file a trademark renewal application with the USPTO. The trademark renewal application must include:

• A sworn statement that the trademark is still in use or that there is a good faith intention to use it in commerce.
• Payment of the required renewal fee.

It is important to note that if the trademark has not been used in commerce during the previous five years, or if you (e.g., the trademark owner) cannot demonstrate a good faith intention to use it in the future, the trademark registration may be cancelled by the USPTO.

It is recommended to renew a trademark registration before the 9th anniversary in order to avoid late renewal fees and other possible penalties. Failing to renew a trademark registration on time may result in the cancellation of the trademark registration, and the trademark owner may lose the exclusive rights to use the trademark.

Enforcing Trademark Rights

To enforce your trademark registration against possible trademark infringement, you can take the following steps:

• Monitor the marketplace: Regularly search for potential trademark infringement of your trademark in the marketplace to ensure that your rights are not being violated.
• Investigate potential infringement: Investigate the alleged infringing activity to confirm if there is a violation of your trademark rights.
• Contact the infringing party: If you have determined that there is a violation of your trademark rights, send a cease-and-desist letter to the infringing party, demanding that they stop using the infringing mark.
• Seek legal remedies: If the infringing party does not comply with your cease-and-desist letter, you can seek legal remedies, such as filing a trademark infringement lawsuit in federal court.
• Consider alternative dispute resolution: You may also consider alternative dispute resolution options, such as mediation or arbitration, to resolve the dispute outside of court.

Note: It is highly recommended to consult with one of our trademark attorneys for personalized guidance and representation in enforcing your trademark rights.