If you have ever applied for a trademark, you know the process is tedious and often slow. From identifying your mark, to searching databases to ensure uniqueness, to completing the application, and working with a US Patent Trademark Office (USPTO) Attorney to address and overcome objections, the process involves a lot of time and attention. So, it is not a big surprise that when the notice of approval finally arrives, you want to breathe a sigh of relief and put the whole trademark matter aside for a long time. This would be a mistake.
Getting Trademark Approval is Only Step One. Proper Maintenance is Necessary.
Sure, go ahead and celebrate that you received notice that your mark was approved, but do not take trademark matters off your to do list. Doing so would risk wasting all the time and resources you dedicated to getting the approval in the first place. Now is the time to keep your trademark alive and protected.
What does this mean?
- First, to keep your trademark alive, you must use it in commerce, and continue to use it. If your intention is to keep the trademark registration and all the benefits that come with it, then you must have evidence of regular use. If you are not using the trademark for the goods and services listed on your registration, you must delete these goods and services.
- Second, you must remember to file your “maintenance documents” at regularly scheduled intervals to show that you are continuing to use your trademark. If you do not file these documents before the deadline, your registration may be canceled or may expire.
If you stay on top of these requirements, you should not have too much trouble keeping your trademark alive. The next question is whether your trademark is as protected as it should be. This is where trademark enforcement comes into play.
Policing your trademark is critical and failing to do so creates risks and potential harm to your business reputation and goodwill.
Trademarks are a communication tool that conveys a message about you and your company such as your values, beliefs, purpose, and vision. In a saturated marketplace, the role of such messages cannot be understated. Trademarks also serve as a signal to help customers find you. When a customer sees your trademark, you want it to grab their attention and let them know exactly who they are dealing with and the quality of service they will receive. Just one view of a well-known trademark can elicit these thoughts in a customer’s mind.
However, if someone else is using your trademark or something very similar, your message may be compromised. Imagine a similar business using a logo almost the same as your trademarked one. Why would they do this? Maybe they need to “borrow” your good reputation because their business is suffering due to poor customer service. If you do not police your trademark, this activity could go on for several months or years and before you know it, your solid reputation is sinking. There is a good chance that confusion created by a non-reputable company will cause potential customers to believe your business is the one they want to avoid.
Here are a few key steps to protect your trademark rights:
- Monitor new trademark applications filed with the USPTO or hire a trademark monitoring service to do it for you.
- Conduct regular Internet searches for use of similar business names, services, and marks. Social media sites and Google are good places to look.
- Evaluate a potential infringement before going on the attack. Consider if the potential infringer has a reasonable argument for challenging YOUR use of the name or mark. You do not want to accidentally cause the termination of your rights. Try and determine how long each business has been co-existing and if there has been confusion in the past.
- Send cease and desist letters to anyone who may be infringing. Often, this stern letter will be enough to end the infringement since most people or businesses want to avoid becoming embroiled in a lawsuit.
- Post a Take-Down Notice on social media. This is an adversarial step that could have an impact on someone’s business so definitely think before you act and consider talking to an attorney first.
- If all else fails and the infringement is causing harm talk to an attorney about filing a lawsuit.
Even the best trademark watchdogs will miss something but that is not a reason to back down. Failure to remain vigilant could result in the weakening of a trademark, making it less distinct, and this can potentially lead to a loss of trademark registration. Do not let all your trademark application and registration work go to waste, keep your trademark alive and protected.
Every effort is made to provide accurate, complete, and current information in Milestone Law Group’s blog. However, Milestone cannot guarantee that there will be no errors. In addition, note that articles are current as of the date of original publication and therefore may no longer reflect the current state of the law.
The information in our blog is shared for informational purposes, not to provide specific legal advice. Receipt of this material does not establish an attorney client relationship. The blog should not be used as a substitute for competent legal advice from a licensed professional attorney. Please contact us if you have any questions.