What are the Steps to Protect my Trademark after Registration?

A video version of this blog can be found on my YouTube channel How do I protect my trademark after registration? . In this blog when we talk about needing to obtain a copyright or trademark, we are talking about obtaining federal registration from the US Copyright Office at copyright.gov or the United States Patent and Trademark Office at uspto.gov.

Today’s question is what are the steps to make to maintain a trademark once it’s filed? Again, what are the steps to maintain a trademark once it’s been file and approved? I guess, we will start with the most obvious answer (but maybe not) and that is to use it. If you take the opportunity and time to build a brand, register a mark with the federal government, spend the funds to get it done, use it! Make sure that you use it (the mark itself) you don’t have to use the ® symbol, The ® after your trademark/ after your brand is not required but this is good to let other people know that you are taking this seriously, that this your brand and they should not infringe upon it on. Once approval has been granted by the United States Patent and Trademark office use the ® wherever your trademark appears – on your website, your promotional materials, or even stories on social media. Remember this is always good but it is not necessary. What is necessary is absolutely necessary to protect your trademark is that you use the mark/brand in commerce. Five or six years after you receive the registration for the mark, the government will ask you to declare (swear) that you are using it in a declaration of use filing. About another four years later so that is eight or nine years after registration you’ll have to apply for and file not only a declaration of use but also a renewal. The great thing about trademarks is that you can keep them as long as you keep using them and maintain that renewal timeframe. Another great thing that is now (a more recent thing) the US Patent and Trademark office will send you a reminder. In order to maintain your trademark and be aware of those dates you want to make sure you keep your email address or your mailing address that you used when you went ahead with that registration up to date with them. They will send you a courtesy email to let you know that you’re up for either renewal or a declaration of use.

The other thing I would recommend to ensure trademark protection if you have a product is getting shipped to you from outside our country or you are shipping over to other countries, that you register your mark with customs and border protection. There is a fee related to that but there are so many counterfeits that do come into the country on a daily basis with a billion-dollar industry and doing that registration can prevent your product or brand from becoming victim to counterfeits. Customs will audit shipments and pull those things that come in that have not been approved through the process that you’ve sanction as one okay for your brand.

In summary, we said, make sure that you use it, make sure that you maintain registration timelines if you have a product make sure that you register with customs, and lastly monitor your mark. This also may seem obvious or self-explanatory, but I know many people don’t do it (monitor their marks). Monitor the way that your mark is used and monitor who is using it. You can monitor the mark at the USPTO. If you’ve gone through the registration process then you know that your mark has to get published in a gazette for notice so that if there is any opposition from folks in the community where they believe your mark is too similar then they have the opportunity to raise opposition. Subsequently, a trial could occur if there is opposition raised. You should be looking at those gazettes or monitoring them for conflicts to your mark. You can create alerts or have counsel if you have one create alerts for you to monitor that market and see that there is anything coming in through the Gazette process to be concerned about. Say that an examiner from USPTO has approved it (the conflicting mark) for publication it is your responsibility and right at the mark owner to go in and oppose. You need to make sure that there are not any conflicting marks potentially being approved. Because you let that happen then what happens is basically dilution and you lose the strength of your mark and also lose the right (to some extent) to say that someone is infringing and then also the right to claim damages to some extent. So, monitor within the United States patent and trademark office and also monitor in the free market. Set up alerts you can hire someone to do that or you can do it yourself if you feel technically savvy. Watch what is happening on the Internet and these marketplaces. Walmart is a marketplace now, Amazon, and Instagram. People are selling products and services everywhere. You need to monitor these marketplaces and make sure that there are not people who are infringing on your brand, pretending to be you, capitalizing on the goodwill that you have created, and using it for their own benefit. That is a part of your responsibility as the mark owner to protect it. Also, protect the way that it is used. I like to give clients this example. Aspirin was a registered mark. We began to use the word aspirin as a generic term for pain medicine but initially, it was a registered mark, Or Xerox. When we say we are going to Xerox something (not sure anyone says this anymore) but when we do make the brand Xerox synonymous with an action, in this case making a copy. we make the brand generic. Be careful that you do not make your brand synonymous with action. So, we don’t Google things, we use Google to search the Internet if I could use that parallel. Ensure that you internally use the brand right. Make sure that you use it at the name of the brand or product or service as opposed to an action word. That type of use will lead to what we call the death of your trademark ‘generocide’ where basically it kills itself. Don’t let it become generic! Stay say safe, continue wearing your mask. Unfortunately, I am COVID positive. I’m feeling well, but I’m in the house and I had a lot of great events planned for this weekend and so I am not so happy about that. Take this seriously guys take your health seriously and stay safe and well. I’ll talk to you next week.

A. Browne, Esq. © 2021 All Rights Reserved.