What to do once your trademark registers

What to do once your trademark registers

  • 09 March, 2019
  • Bold Commerce Collaborator

Once you have registered your trademark, your rights are protected, right?

Wrong. You have an obligation to police the use of your mark in the marketplace.

Policing Unauthorized Usage

With enough unchecked usage, you may lose your trademark. Even worse, a copycat who has been using your mark may be allowed to continue their use if they have been doing so for some time. The legal concept of laches lets copycats continue their bad behavior unless you do something to stop them. 

How can you keep track of trademark use if you are busy? The USPTO won’t help you protect your brand once it’s registered, they won’t even bring it to your attention if a competitor is trying to register a similar name.If you see a competitor trying to register a similar mark, you can block it with an Opposition, or if it's already registered, a Cancellation Proceeding.

Traditional trademark watch services only monitor the trademark databases, but the problem is that the copycat is selling through online retailers. You can use a watch service, which provides a search for you each month or so, with the latest hits that are similar. If you find one that is close, you can raise it with your attorney and take action against the perpetrator.

Registering with platforms and CBP

Another solution? Register your brand with online retailers.  You can also register your brand with border services to prevent import of knock-off goods, and give you a leg up in stopping the problem before it starts.

You also need to continue use of your mark for the goods that are listed with the application.

  • First Renewal (Section 8 Declaration):

    • Trademark owners must file a Declaration of Use (also known as a Section 8 Declaration) between the 5th and 6th years after the registration date. This declaration requires the owner to affirm that the trademark is in use in commerce. If not filed, the registration will be cancelled.
  • Renewal (Section 9 Application):

    • The first renewal of the trademark registration is due between the 9th and 10th years after the registration date, alongside another Section 8 Declaration of Use. This process involves filing a combined Section 8 (Declaration of Use) and Section 9 (Application for Renewal).
  • Subsequent Renewals:

    • After the first renewal, the trademark owner must continue to file a combined Section 8 and Section 9 renewal every 10 years to keep the registration alive.
  • Grace Periods:

    • There is a grace period for late filings, but filing during the grace period incurs additional fees. Failure to renew within the grace period results in the cancellation or expiration of the registration.
  • Section 15 Declaration (Incontestability):

    • After continuous use of the trademark in commerce for five years following the registration, the owner may also file a Section 15 Declaration of Incontestability. This declaration, once accepted, makes the trademark registration "incontestable," providing stronger protection against challenges, except under certain limited circumstances. It is not a renewal but an important step in strengthening a trademark's legal standing.
  • Use Requirements:

    • At each renewal, the owner must prove that the trademark is still in use in commerce for the goods and services listed in the registration. This typically requires submitting specimens (examples of use) and a statement confirming the continued use of the mark.
  • To renew your mark or if you have any questions, Contact us today.

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