If you are a business owner, you may have heard that registering your trademarks is vital when it comes to building and protecting your brand; however, registering your trademarks is not enough ā you also need to maintain your trademarks to ensure they remain legally protected, which involves taking certain actions to ensure that your trademark remains valid, active, and enforceable. If you want to learn how to properly maintain your trademarks, you came to the right place, so read on to learn what actions you need to take.
How to Maintain Your Trademarks ā Vital Actions You Need to Take
File Your Maintenance Documents with the USPTO
The first and most essential action you need to take to maintain your trademark is to file your maintenance documents with the United States Patent and Trademark Office (USPTO). These documents need to show that you are still using your trademark in commerce and that you want to renew your registration.
The USPTO has specific deadlines for filing these documents. If you miss these deadlines, your registration will expire or be canceled, and you will lose your nationwide protection for your trademark, which basically means you will also have to start the application process all over again if you want to register your trademark.
The maintenance documents you need to file are:
- Section 8 Declaration of Use. You need to submit a statement of use in commerce, a specimen for each class of goods or services in your registration, and a fee per class. You need to file this form between the fifth and sixth year after registration, and then every 10 years after registration.
- Section 9 Application for Renewal. You need to submit this document to request the renewal of your registration before it expires, every 10 years after registration.
- Section 15 Declaration of Incontestability. This is an optional statement claiming incontestable rights as to the validity of your registration. You can file this form after five years of continuous use of your trademark in commerce. Filing this form can make your trademark more immune to certain challenges or defenses.
You can file these forms online using the Trademark Electronic Application System (TEAS) on the USPTO website. You can also combine some of these forms into a single filing to save time and money.
Monitor Your Trademarks and Watch Out for Infringement
Another important action you need to take to maintain your trademarks is to monitor them and watch out for any infringement or misuse by others. Trademark infringement occurs when others use marks that are identical or confusingly similar to yours without your authorization and cause a likelihood of confusion among consumers.
Trademark infringement can damage your brand reputation, reduce your sales, and dilute your trademark rights. Therefore, you need to be vigilant and proactive in detecting and stopping any unauthorized use of your marks.
Some ways you can monitor your trademarks are:
- Conducting regular searches. You can use various tools and databases to search for similar marks that may infringe on yours. For example, you can use the USPTOās Trademark Electronic Search System (TESS) to search for pending or registered trademarks in the U.S., or you can use Google or other search engines to search for marks used on the internet or social media.
- Using watch services. You can also hire professional watch services that can monitor various sources and alert you of any potential infringement or conflict with your marks.
- Opposing or canceling conflicting marks. If you find out that someone has applied for or registered a mark that infringes on yours, you can take legal action to oppose or cancel their mark. For example, you can file an opposition with the USPTOās Trademark Trial and Appeal Board (TTAB) within 30 days of the publication of their mark in the Official Gazette, or you can file a cancellation petition with the TTAB within five years of their registration date.
Work with Legal Professionals
The best action you can take to properly maintain your trademarks is to hire a skilled and experienced trademark lawyer. Maintaining your trademarks is not a simple task. It requires time, money, and expertise. In addition, making mistakes can be astonishingly easy. Therefore, you need to work with someone who understands trademark law and can help you both avoid legal battles and win them when they are inevitable.
At Jurado & Associates, P.A., we have the skills and knowledge to help you effectively protect and maintain your trademarks.Ā If you are looking for reliable and qualified trademark attorneys, look no further than Jurado & Associates, P.A. Contact us today by phone at (305) 921-0976, or by email at [email protected].
