In my last series of posts, I explained how critical it is to protect your company’s image by securing trademarks and/or servicemarks, especially if your business is expanding. Furthermore, I let you know that even after you have successfully obtained federal or state trademarks and/or servicemarks, you must be vigilant and regularly perform online searches of your business, so you can find out immediately if your image has been compromised by someone else.
But, just because you police your trademarked image does not mean this protection is available for eternity. There’s a maintenance process you must follow to keep these marks active over time.
Preventing Expiration
After you have successfully gone through the procedure of attaining a federal trademark or servicemark, you will receive a Certificate of Registration from the U.S. Patent and Trademark office. To guarantee that the respective mark or marks are valid for your lifetime and the lifetimes of your beneficiaries, you must go through a number of very specific maintenance steps.
It’s crucial to note that unlike a copyright or a patent, your mark will not expire unless you fail to complete the required maintenance filings with the U.S. Patent and Trademark Office. If you neglect to fulfill these filing requirements, your valuable registration will be canceled and your trademark or servicemark protection will then be lost.
So once you get your Certificate of Registration, remember the exact date of your registration. You will need to make sure you send in your first maintenance filing between the fifth and sixth anniversaries of this registration date.
Two declarations are needed to confirm the mark is currently in use:
1. “Declaration of Continuing Use” Section 8 (Cost $100)
2. “Declaration of Incontestability” Section 15 (Cost $200)
For the Section 8 declaration, you need to verify that the mark is being utilized with respect to the goods and/or services for which this protection is registered. If, however, the mark is not in use, you must provide a reason for why this inactivity should be excused.
In terms of the Section 15 declaration, you will be asked to attest to the fact that the mark has been in continuous use for at least five consecutive years from the registration date. Like the Section 8 declaration, you’ll need to confirm that your mark still reflects the goods and/or services for which it is registered.
If you miss this deadline, you will still have a six-month grace period to file the necessary information. But after that timeframe, your registration will be canceled and all benefits will be lost.
Similar to the first set of maintenance filings, you will be expected to send documentation on the tenth anniversary of your registration. Additionally, you are required to renew your registration every ten years thereafter.
Two declarations need to be filed at this time:
1. “Declaration of Continuing Use” Section 8 (Cost $100)
2. “Application for Renewal” declaration Section 9 (Cost $400)
Again, these declarations require you to confirm that the mark is still being used. For the Section 8 declaration, you need to be prepared to corroborate that the mark is in use with respect to the goods/services for which the coverage is registered. If the mark is not currently in use, then you must demonstrate why this inaction is warranted.
Keep in mind that as a trademark owner, you aren’t permitted to maintain rights in a trademark that you’re no longer using. Furthermore, you must update your registrations at the time of any maintenance filings so that the U.S. Patent and Trademark Office has the latest information on your marks.
Using Your Certificate of Registration
Receiving the Certificate of Registration allows you to start using the ® designation in conjunction with your trademark. To clarify for some, the ™ designation is for trademarks that are in use, but not officially registered with the U.S. Patent and Trademark office.
Please be aware that in instances where your mark appears multiple times on the same object, you do not need to post the ® or ™ next to each trademark or servicemark. Although such repetitive posting is allowed, it’s generally expected that the correct designation is attached to only the most prominent display of the trademark on any item or page. As such, you are not required to make further postings, if you’ve already visually established your mark.
In Conclusion
There are certain ongoing procedures that need to be fulfilled in order to protect and maintain your trademarks and/or servicemarks, so you have the assurance that your company’s image will be continuously protected. In this way, if you ever discover that your brand has been stolen, you have the legal backing to make sure this infringer faces the appropriate consequences.
DregerLaw has successfully handled many trademark infringement claims. So don’t hesitate to give me a call if your company image or brand has been compromised. We’re ready to ensure your business’ rights are not being violated.