Branding and brand protection is an ongoing investment. We highlight the following four ways to make sure your trademark is protected after it is approved for registration by the USPTO.
- Use it or lose it. Trademark owners must make sure their registered trademarks are in use continuously with the goods or services listed in the application or risk abandonment or cancellation of the registration. Nonuse for three consecutive years creates a presumption of abandonment, making it difficult to demonstrate intent to resume use. If the trademark is not being used or is now being used with different goods or services, the registration may be in jeopardy. There are circumstances that will excuse periods of nonuse, but acceptable excuses are limited even if a business fully intends to use the mark again in the future. Fortunately, however, businesses directly impacted by COVID-19 may be allowed a temporary excuse from nonuse of a trademark. Under such circumstances, a trademark maintenance declaration (see below) will need to include an explanation of how COVID-19 has affected the business and caused a temporary gap in using the trademark.
- Maintain it. Trademark owners must maintain their registration with the USPTO by periodically filing required declarations and renewals. An initial declaration of use (or excusable nonuse) is required between the 5th and 6th year of registration. The declaration of use is required again before the end of the 10th year of registration and then every 10 years after that along with the renewal of the trademark registration. Be proactive about tracking these deadlines or risk cancellation of the registration. The USPTO will send a courtesy email one year prior to the filing deadline, which is the earliest date that the declaration can be filed. At a minimum, make sure you provided a valid email address to the USPTO and authorized email communication. No reminders will be sent by regular mail, and no follow-up emails will be attempted for undeliverable emails. If you receive something in the mail that looks like an invoice for a post-registration filing or renewal, beware: it may be a worthless solicitation or a scam.
- Enforce it. Trademark owners should always be on the lookout for infringing use and take appropriate steps in response. Don’t sit on your hands if you notice your mark or a very similar mark being used by a competitor. Any infringement should be evaluated for response, no matter how small. It’s much easier to bring someone’s intentional or unintentional use of your mark to a halt when the infringing use first starts. Delaying enforcement weakens your position and may give your competitor valuable defenses, such as “laches”—an equitable doctrine that could give an infringer the right to use the mark because you waited too long to enforce it. In addition, the USPTO may approve a mark for registration that you might think is similar to your registered mark. You can employ the use of a trademark application monitoring service that will alert you if an application for a potentially infringing mark has been filed, which gives you the opportunity to oppose the registration.
- Don’t change it. Over time you may want to update your trademark as your brand evolves. The general rule: you can’t alter the mark if the change results in a material alteration from the mark as registered. A modification of a mark that creates a different commercial impression is not permitted and could jeopardize the registration. The USPTO has found that changes in punctuation or spacing, such as the addition of a question mark, or deleting a space between two terms to create one single term, are material alterations that could cause the mark to be cancelled. Carefully review all proposed changes to your mark to determine whether it retains the same commercial impression, or whether you should apply to register it as a new mark with the USPTO. •
Rachel M. Wolf
SHUMAKER WILLIAMS, P.C.
General Counsel, Pennsylvania
Restaurant & Lodging Association