- To maintain a trademark registration, you must keep using the mark exactly as registered — same spelling, grammar, appearance, and, for a stylized mark, the same color, font, and logo — on the same goods and services.
- Neither the USPTO nor any other government authority will police your trademark for you; it is your own responsibility to identify and act against anyone using your mark in a way that infringes, dilutes, or tarnishes your brand.
- Watch services can help monitor new trademark filings and approvals at the USPTO so you can oppose registrations that might conflict with your mark.
- The next required USPTO action typically comes between the fifth and sixth year after registration, when a declaration of continued use must be filed to maintain the registration.
- After that, the registration must be renewed ten years after the original registration date, and then again at every subsequent ten-year anniversary.
By: Jason Rosenblum.
First, you should keep your registration certificate in a safe place. Although there will not be any US Patent and Trademark-related actions or findings that need to take place for several years, one of the main requirements for you to maintain your new registration is to continue to use it.
This means the trademark must be used as registered: same spelling, grammar, and physical appearance. In the case of a stylized trademark, the same color font, and logo.
You must continue to use it on the same goods and services as you registered. This is to your benefit as a trademark only becomes truly valuable when a consumer identifies the mark and affiliates it with your brand.
Second, and very important, is to police your own registered mark. Neither the US Patent and Trademark Office nor any other entity or authority will go after anyone for using your trademark.
You are responsible for policing preventing and stopping others from wrongfully or illegally using your trademark. While the USPTO will stop a similar application for a trademark from registering, they have no way of knowing whether another one out there might be using a mark that’s similar that may dilute your trademark value.
If you see another using your mark that you believe infringes, dilutes, or tarnishes your brand, it’s your responsibility to act by sending a cease and desist letter commencing a trademark infringement action.
In order assist you in policing in your mark we provide watch services to monitor marks filed and/or approved at the US Patent and Trademark Office so that you can oppose their registrations.
The last point here is that you can expect the next USPTO related action will come between the fifth and sixth year after registration. At that point, a declaration of continued use will need to be filed to maintain the registration.
Ten years after the registration and then every subsequent 10-year anniversary thereafter you will need to renew the registration.
As a side note, but absolutely an important point to think about is that if as part of your continued use you plan on using the trademark in another country, you should consider filing for a trademark in that country.
In many cases, a U.S. trademark can serve as a basis for a foreign registration. Stay tuned for our next tip on how to avoid making major legal mistakes in your business in the meantime I hope this has raised some questions, please contact either Craige or me to discuss your particular business needs.
Website: https://jhrlegal.com/
