Maintaining Trademarks

Once a trademark is registered, it should be properly maintained. Failing to maintain a trademark can, and often does, result in the loss of intellectual property rights. It wouldn't make sense to buy a new car and never change the oil. Likewise, failing to properly maintain a trademark after having made the initial investment to get it registered will leave you with a clunker.

Trademark maintenance can include the following:

1. Proper Use.

Trademark owners can either add to or detract from the value of their trademarks, depending on how those marks are used in marketing or other materials, including websites. Important first steps in proper use include coupling marks with generic terms, setting marks apart, and utilizing recognized trademark symbols. In contrast, using marks descriptively or generically in marketing can actually result in loss of trademark rights. Also, because federal trademark rights are based on use in commerce, owners should be aware that their trademark rights may be lost if the products or services related to them are no longer in the market.

2. Policing the Mark.

Trademark owners would be well advised to put a system in place to monitor the market for potentially infringing use or misuse by others, and to address any problems identified. Appropriate measures might include cease and desist letters or corrective marketing. Unchecked, infringing use or misuse by others may reduce the strength of a mark or actually prevent a trademark owner from asserting rights in the mark.

3. Calendaring & Filing Maintenance & Renewal Documents & Fees.

Once a trademark is registered, owners should be aware that maintenance and renewal documents and fees are due at certain intervals. For federally registered marks, key dates include: (a) 5 years from registration; (b) the first 5 years of continuous use in commerce; and (c) 9 years from registration. If deadlines or filings are missed, rights in a mark may be lost.

As Cache Valley's premier provider of intellectual property legal services, Peck Hadfield can help you or your business properly maintain your valuable trademarks. We work with businesses to develop a customized strategy for increasing and maintaining the value of their trademark portfolios.