Trademark Maintenance

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Act (DMCA)

So your business has successfully registered its trademark(s) with the U.S. Patent and Trademark Office (USPTO). Congratulations! But did you know this is only the beginning? Not only do businesses have to maintain the trademark registration, but they also have to actively use and protect the mark.

What needs to be done to maintain my business’s trademarks?
In order to maintain a trademark, a business or nonprofit must:

Continuously use the trademark
Renew the trademark registration
Monitor the trademark for infringement

Because trademark rights are based on actual use, your business must keep using its trademarks exactly as they were registered with the USPTO. If you stop using the trademark for 3 consecutive years, then you have legally abandoned the trademark. If you change the trademark (i.e., redesign your business logo, revise your slogan, or start using a different name) and stop using the trademark that you actually registered, then you will lose the registered trademark and will need to submit a new trademark registration application for the new/revised trademark.

Renewing Your Trademarks
Trademark registrations must be renewed with the USPTO by certain deadlines:

Section 8 Filing: Between the 5th and 6th anniversary of your trademark registration, you must file a Section 8 Declaration of Use showing that you have continuously used the mark in commerce as it was originally registered. This means that you will have to identify the goods or services associated with the mark and submit specimens showing how you are using the mark in commerce (i.e., to make sales).
Section 15 Filing: At the same time, you should file a Section 15 Declaration of Incontestability, declaring that third parties can no longer contest your trademark rights because you have continuously used the trademark for 5 years. To be eligible to make this declaration, there cannot be any pending litigation involving the trademark, and there cannot have been an adverse legal decision related to your business’s ownership of the mark.
Section 9 Filing: Before the 10th anniversary of your trademark registration (and every 10 years thereafter), you must submit both the Section 8 Declaration of Use and the Section 9 Renewal to renew your trademark registration.

Failing to file the renewal on time will result in your trademark being canceled. And if you cannot show that your business is using the trademark, then you will now be able to file the required documents.

A Note of Caution: Because trademark registrations are public records, you are likely to receive a fraudulent notice to renew your trademark before the actual deadline. These notices often look like they're from a government office, but they are not actually coming from the USPTO. Once you pay these scammers the “filing fee,” they simply disappear with your money.

Monitoring Your Trademarks
Contrary to popular belief, the USPTO does not police your trademark for you. Their role is limited to preventing new applications for confusingly similar trademarks. This means the USPTO won’t catch any businesses that use a similar name, logo or slogan if that business never tries to register a trademark. These businesses could be infringing upon your trademark rights, and if you aren’t monitoring your trademark, you won’t know until you start losing customers and clients to the infringer. And if you allow the infringement to continue (whether you knew about it or not), you could lose your rights in the trademark.

Be Careful With Licensing Agreements
Businesses can also lose their trademark rights if they engage in a practice known as “naked licensing.” Any time you enter into a business deal that allows another entity to use your trademarks, you must adequately control and supervise how your trademark is being used. This situation might arise in joint ventures, marketing or distribution deals, and other licensing arrangements. In any of these situations, it is extremely important to have well drafted agreements in place to protect your trademark rights and maintain control over how your trademarks are used.

SCHEDULE A CONSULTATION

Trademark Monitoring and Maintenance

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.

Trademark Audit: $1850

We recommend an annual trademark audit so that you can spot potential risks from: not using your trademarks (or not using them properly), failing to comply with trademark-related agreements, conflicts with third party trademarks, missing filing deadlines, and not having the proper policies and procedures in place.

Includes:

Inventory of company's trademarks and domain names
Review of company's trademark-related records
Docketing filing deadlines and client reminders
5- or 10-year trademark filings (if due, plus USPTO Fees)
Assessing ownership and use of claimed trademarks
Searching for potential trademark conflicts
Assessing compliance with trademark agreements
Assessing the company's trademark policies and procedures

An additional fee will be quoted for:

Preparing cease and desist letters
Updating agreements, policies, or procedures
Filing new trademark applications

5-Year Trademark Filings: $850 per mark
(Section 8 Declaration of Use and Section 15 Declaration of Incontestability)
+ $425 minimum USPTO Fees per class

10-Year Trademark Filings: $1,050 per mark
(Section 8 Declaration of Use and Section 9 Renewal)
+ $525 minimum USPTO Fees per class

IP Licensing Agreement: $4,275
Add HIPPA Business Associates Agreement: +$1,100
Review and Redline: $2,150

State Trademark Registration: $400 + $125 Secretary of State Fee

Trademark Assignment Agreement and Recording: $650 + $40 USPTO Fee / $25 Secretary of State Fee

Other Trademark-Related Services

Customs and Border Protection Registration: $400 per registration number +$190 CBP Registration Fee (per registration number and per class of goods for trademark registrations)

Fictitious / Trade Name Registration: $375 + $39 Secretary of State Registration Fee / $29 Renewal Fee