Knowing how to care for and protect a Federal trademark doesn’t need to be difficult.
Yes, it takes some time and attention. But, if you want your Federal trademark to be there for you and your brand in the years to come, you can get started on that—and make significant progress—right here today. Never forget that you are responsible for properly using and maintaining your trademarks!
Trademarking your brand is a smart business decision. Keeping your Federal trademark alive and in force is just as important.
Here are the top 5 steps to take to make sure that your Federal trademark continues to provide the highest level of protection for your brand and your business:
- Use the mark exactly as it appears on the Certificate of Federal Registration.
- Don’t stop using your trademark.
- Keep your registration in good standing at the S. Patent and Trademark Office.
- Be sure to use the ® trademark symbol with your mark.
- Protect your trademark from infringers.
Use the mark exactly as it appears on your Certificate of Federal Registration from the USPTO.
It is fundamental to use the trademark registered with the U.S. Patent and Trademark Office. This means using the same exact words, colors, spacings, shapes, and punctuation. Any alteration in how you use a trademark could hurt your trademark rights
This may seem obvious, but one would be surprised how often changes/alternations creep into a trademark over time. Those alterations can, in turn, undermine the distinctiveness of a mark, which weakens it. So, from time to time, it is a good idea to compare your mark with the Official Certificate from the USPTO.
Also, you need to use your exact trademark to renew it (see below).
We can help you keep the trademark that you worked so hard to get. Contact us today.
Don’t stop using your trademark.
You’ll need to continue using your trademarks on the products and services listed in your Registration Certificate. When there is a break in the use of a trademark, questions of abandonment arise. These questions can undermine enforceability and your ability to protect a Federal trademark.
Also, you need to use your trademark or have a very good reason to renew it (see below).
Keep your registration in good standing at the U.S. Patent and Trademark Office.
Trademarks may never expire – if you “check-in” with U.S. Patent and Trademark Office at specific times to let them know that you are still using your trademark.
These dates for renewal are listed on your registration certificate and they’re vitally important. If the documents are not filed by the due dates, your registration will be canceled and cannot be revived or reinstated. The most important deadlines for most registrations are at the 5- and 10-year anniversaries.
@ Five Years
- You’ll need to file a Declaration of Continued Use. This states that you’re still using your mark. You’ll need to do this to continue your trademark rights.
- Also, you may want to file a Declaration of Incontestability if you have used your mark continuously and consistently. Incontestability means that your brand is strong and easier to legally protect. It also makes it easier to protect a Federal trademark.
@ Ten Years
- You’ll need to file a Declaration of Continued of Use. Again, this states that you’re still using your mark.
- You’ll also need to file an Application for a Renewal.
Be sure to use the ® trademark symbol with your mark.
Trademark symbols are an important way to announce that your trademark is backed by the Federal government. If you haven’t already, you should immediately transition from the “TM” symbol to the ® symbol. This includes your mark on social media, all advertising and promotion, and especially your website.
The symbol lets the world know that your brand is protected nationally by Federal law.
Of course, if you aren’t using a symbol – start!
Protect your trademark from infringers.
As unpleasant as it can be, finding infringers and asserting trademark rights is the key to the long-term health of any trademark. Permitting other businesses to use the same or similar marks risk less protection and even unenforceability of trademark rights.
While the U.S. Patent and Trademark Office will prevent others from registering similar marks, it does not get involved with enforcement.
Two strategies to find businesses using a similar trademark are (1) to set up a Google Alert (link to alerts.google.com) and (2) periodically search the USPTO’s trademark database (link to USPTO database).
If a similar brand comes up, then it’s time to consider having a trademark law firm prepare and send a trademark cease + desist letter.
A properly maintained Federal trademark may last forever – if you use it and keep it in good standing. If you don’t, someone else can take it.
For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.
Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).