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.
Monitoring Your Trademark
The USPTO does not police trademarks. 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. Allowing this infringement to continue could not only negatively impact your sales as consumers confuse your brand with your competitors, but it could also significantly weaken your case in a trademark dispute.
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 use 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. If you change your registered trademark, then you’ll have to file a new trademark application.
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.
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.
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