In this post, I discuss the requirements for maintaining a trademark after registration, including the filing requirements to keep it protected.
The process for submitting an application to register your trademark with the United States Patent and Trademark Office can be long and taxing. So, once the process is complete and you have received your certificate of registration, you may be ready to breathe a sigh of relief.
Unfortunately, you must maintain your trademark. Unlike the registration process, however, maintaining a trademark is fairly simple and should not be too difficult. It does, however, require vigilance.
Maintaining a Trademark
One you have received the certificate of registration, your trademark is officially registered with the USPTO and can be found on its official rolls with all the accompanying protections that this entails. At this point, you may also begin to use the ® symbol next to your mark, thereby putting the whole world on notice that your trademark is federally registered.
Your registration, however, does not last forever. Trademark law is meant to protect the marks distinguishing goods and services in use. The law does not allow for discontinued goods or services to continue to receive trademark protections. You must, therefore, maintain your trademark.
Maintaining a trademark requires you to file the first maintenance document—Declaration of Continued Use or Excusable Nonuse with the USPTO—between the fifth and sixth year following your trademark’s registration date. You must continue to file an additional maintenance document—Combined Declaration of Continued Use and Application for Renewal—every ten years thereafter.
It is important to recognize that the USPTO does not send out reminder notices. You must keep up with these deadlines yourself—or have your attorney do it—as failure to file the appropriate maintenance documents will result in the cancellation of your trademark registration. While a six month grace period is generally available, once that time period passes, there is no way to revive your cancelled trademark. Once cancelled, you must begin the registration process all over again, starting from the very beginning.
Protecting Your Trademark
Maintaining a trademark is about more than filing the appropriate documents with the USPTO. You must also be vigilant to ensure that no one else is infringing upon your mark.
While trademark law provides you with the exclusive right to use your mark, the federal government will not police your mark on your behalf. You are responsible with ensuring that no one else is using it and, if necessary, bringing suit against those who do.
Failure to take action against those who utilize your trademark may result in your mark’s losing its distinguishability within the market. If this continues for too long and on too great a scale, you may find that your rights to the exclusive use of your trademark disappear with little available remedy.