Trademark protection is an ongoing endeavor. In fact, there are two main ways that you must maintain your trademark registration:
According to the USPTO website, “[y]ou are responsible for enforcing your rights if you receive a registration, because the USPTO does not “police” the use of marks. While the USPTO attempts to ensure that no other party receives a federal registration for an identical or similar mark for or as applied to related goods/services, the owner of a registration is responsible for bringing any legal action to stop a party from using an infringing mark.”
Your efforts in protecting your trademark do not end with registration. Maintaining your trademark will require actively policing of the trademark. Policing a trademark means monitoring the USPTO for other requests for registration.
Why is it so important to police your trademark? In short, because if your name becomes too diluted, you are at risk of losing your federal registration. For an in-depth explanation of how to police your trademark, find more here.
If the USPTO receives an application with a similar or like mark, the USPTO is not required to alert a registered trademark owner that a similar mark is attempting to register. Being assertive in policing your trademark is the best way to oppose any trademark infringement. Just like with the USPTO, if another company begins to use your trademark without permission, they will not send you a notification letter. Frequently, a cease-and-desist letter will stop an infringing company in its tracks. If not, your federal trademark registration grants you the right to take the infringing party to federal court.
Unfortunately, there are other dangers that threaten your trademark. “Passing off” occurs when another business attempts to pass off a product as a trademarked product. Meaning someone may not try to copy your trademark; instead, they will attempt to generate revenue by passing off their product as yours and collecting the revenue. Or perhaps, as Kanye West has recently learned, a trademark will be very similar to your trademark, thereby creating confusion for consumers. If the registration is not challenged, consumers may find themselves purchasing the wrong product. Finally, for trademarks that gain a level of fame, dilution from overuse of the trademark can hurt the ability of a registered trademark owner to protect their mark.
Aside from policing your trademark, registered trademark owners must satisfy one other requirement: you must maintain your trademark by filing the correct paperwork with the USPTO every 5th and 10th year.
USPTO deadlines require maintenance documents between years 5 & 6, as well as between years 9 &10. The USPTO may not always provide a reminder or warning that a maintenance period is coming up, so it’s important to have a trademark attorney to stay on top of these deadlines. Monitoring your trademark with the USPTO and staying on top of maintenance paperwork will help keep your trademark protected and working hard for your business.
The most common remedy to trademark infringement is typically an injunction prohibiting additional infringement. If an infringer benefited monetarily from the violation in a measurable way, a court might also award money damages in addition to an injunction. Similarly, if the business to whom the trademark was registered faces monetary loss, a court may award monetary damages to compensate for the loss. Finally, a court may award costs for the attorney and/or court fees. Trademark protections arise from proper registration, monitoring, and maintenance. These three steps are all equally necessary in protecting one of your business’s most valuable assets. Ensure you are protecting your assets by knowing how to register, monitor, and maintain your trademark. Contact our office for more information on how to best own your brand.