how to maintain your registered trademark

To maintain rights granted from federal trademark registration, a registrant must take further steps:

first, get ready for spam.

trademark registrations are public.  So, be prepared for people soliciting you with official-looking requests for payment of fees.  almost all of these are spam or fraudulent.  speak to your trademark attorney if you have any concerns. to address issues here, project cip offers ip asset management, discussed more below.   

second, file maintenance & renewal documents & fees. 

Maintenance and renewal documents and fees are due at the USPTO at certain intervals.  The USPTO does not give notice of upcoming deadlines, and if they are missed, rights in a mark may be lost.  See here and here for details. project cip offers ip asset management, and specifically trademark docketing and maintenance, available upon request.  

third, use the mark properly. 

Rights abandon upon non-use.  Also, you can either add to or detract from the value of your trademark, depending on how you use the mark.  Here are some tips:

  • Give notice.  You should now use the ® symbol whenever you use the mark(s);

  • Use the mark(s) with a generic term or as an adjective, not a noun, E.g., Kleenex [mark/adjective] tissue [generic term/noun]. 

  • Set the mark apart. For example, use large type, caps, quotation marks, different colors, distinctive lettering or use of the word “brand” in connection with the mark

  • Incorporate claims of exclusivity.  E.g., “Only from [insert mark]”;  

fourth, police the mark. 

Put a system in place to monitor the market for potentially infringing use or misuse of your mark(s) by others, and address any problems identified.  Appropriate measures might include cease and desist letters from counsel or corrective marketing.  Unchecked, infringing use or misuse by others may reduce the strength of a mark or actually prevent you from asserting rights in the mark(s).  project cip offers ip asset management, and specifically sentinel trademark monitoring, available upon request.  

Fifth, periodically compare registration scope with how you are using the mark. 

registrations are static, but the use of your mark is often dynamic. Additional applications may be required to cover expanded product lines, expansion to other countries or markets (including sourcing), or to account for new styles or forms of the mark.  Contact your trademark attorney if your practices change or expand in any of these respects. 

 

project cip is happy to assist you with any questions or concerns regarding your trademark.    


law office of logan, utah patent & trademark attorney preston paul frischknecht.  408 sheridan ridge lane, logan, ut 84321.  (435) 512-4893.  copyright 2013 - 2017.