Protecting Your Brand, Part 4 - Enforcing Your Trademark

In Part 1 of this series, we discussed the importance of conducting a trademark search. In Part 2, we explained this idea of the “likelihood of confusion” and what to look for in that trademark search. And in Part 3, we discussed how to register your trademarks with the USPTO. But once your trademark is registered, it’s your job to protect it and enforce your rights. To do so, you must file certain maintenance documents in a timely manner and actively police your trademark.

Photo by Scott Webb on Unsplash

Monitoring Your Trademark

Contrary to popular belief, the USPTO does not police your trademark for you. The USPTO’s role is limited to preventing new applications for confusingly similar marks used on related goods or services. But many businesses use names, logos, and slogans without ever filing an application to register their marks, which means there could be numerous other businesses infringing upon your trademark without the USPTO ever noticing. Failing to police your mark and allowing others to infringe upon your rights could not only negatively impact your sales as consumers follow your brand to your competitors, but it could also significantly weaken your case in a trademark dispute.

With a trademark registration certificate, many infringers will respond to a cease and desist letter. After all, the trademark registration certificate creates a presumption of your ownership in the mark. However, a proper investigation is still warranted before sending out a cease and desist letter. Trademark rights are based on first use in commerce. So it’s always possible that a suspected infringer has “common law” rights in a mark that they were using prior to your registration.

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In addition to policing infringing uses of your mark, you should also carefully control how others use your mark even with your permission. When you allow others to license the use of your mark, you should enter into a licensing agreement. A properly drafted agreement will ensure that the licensee takes appropriate steps to meet your brand’s standards and will dictate when and how the licensee’s use of the trademark might end.

In any event, failing to police and monitor the use of your trademark can result in the mark becoming a generic word that anyone is free to use (e.g., escalator, thermos, dry ice).

Maintain Your Trademark

In addition to monitoring your trademark, there are certain steps you must take to maintain your trademark registration. Between the 5th and 6th anniversary of your trademark registration, you must file a Section 8 Declaration of Use with the USPTO. As the name implies, the Section 8 Declaration requires that you have continuously used the mark in commerce as it was originally registered. Just like the original trademark registration application, you will need to identify the goods or services associated with the trademark and submit a specimen showing how the mark is actually used in commerce.

At the same time, you should also file a Section 15 Declaration of Incontestability. This form allows the trademark owner to claim that their rights in the mark are incontestable because the owner has been using the trademark continuously for five years. At this point, third parties can no longer challenge the validity of the trademark. In order to file a Section 15 declaration, there cannot be any pending litigation involving the mark, nor can there have been an adverse legal decision regarding your ownership of the mark.

Then before the 10th anniversary of your trademark registration, you must file both the Section 8 Declaration as well as a Section 9 Renewal. These forms are usually submitted in a combined filing.

Failing to meet these deadlines will result in the cancellation of your trademark. And no, the USPTO will not send you a reminder. It is your job to keep track of these critical deadlines. If you lose your trademark for failing to file these maintenance documents, you will have to start the entire process from scratch with a new trademark registration application.

If you need assistance protecting your brand:

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