Trademark Maintenance and Monitoring

Congratulations!  You are the proud owner of a brand new registered trademark!  Kudos to you for taking this important step to protect your business and your brand.  But now what?  Did you know that registering a trademark is not the end of your trademark journey?  This article will discuss your continuing obligations as a trademark owner to protect and maintain your registration, including trademark monitoring and maintenance.

So what exactly are your continuing responsibilities as a registered trademark owner???

Use the Registered Symbol

Let’s start with the easy one.  The first thing to do is start using the ® symbol everywhere your mark appears – that means on your website, in your marketing copy, in your newsletters, and yes, even on social media!  Using the ® symbol ensures that others have notice that you have registered your mark. This is often enough to stop infringement from occurring in the first place.

Okay, that sounds simple enough.  What else do I have to do?

Trademark Maintenance Filing

The USPTO requires every trademark owner to file maintenance documents at specified intervals.  As a trademark attorney, I calendar these dates and notify my clients when their filing is due so they don’t have to keep track of it.  If you filed without an attorney, you need to keep track of these dates!

The first filing is due between the 5^th and 6^th anniversary of your registration date. The filing, called a “Declaration of Use,” shows the USPTO that you are still using your trademark. Just as when you filed your trademark application, you must provide specimens showing your mark in use in commerce for each class of goods or services included in your trademark registration.  Optionally at this time, you may also file a Declaration of Incontestability if your mark has been in continuous use for at least five years and you meet other USPTO requirements.

The second time you file a Declaration of Use is between the 9^th and 10^th anniversary of your registration date.  Thereafter, it is every ten years.  And you will continue to own the trademark as long as you continue to use it in commerce and file the maintenance documents when required.

Failure to timely file maintenance documents results in cancellation or expiration of your trademark registration.

Trademark Monitoring

In addition to maintenance filings, you also need to monitor your trademark against infringement. Because the USTPO doesn’t police for trademark infringement.  If you don’t do it, nobody will!  Trademark Monitoring is the process of proactively searching websites, social media, and the USPTO for unauthorized use of your registered trademark and new filings that might pose a likelihood of confusion.

Why Should I Monitor My Trademark?

By monitoring your trademark you will:

• Be Aware of Infringement.  Only by monitoring will you know when someone else is infringing your Intellectual Property.  Awareness of unauthorized use allows you to halt impersonators in their tracks.
• Prevent confusing registrations. Monitoring new filings with the USPTO allows you to file a Letter of Protest or an Opposition before the new mark registers and causes confusion in your marketplace.
• Mitigate dilution of or damage to your brand. Copycats may provide inferior services and get bad reviews… that new customers attribute to YOUR company.  With trademark monitoring you can detect unauthorized use of your mark and take proactive action before a copycat causes damage to your brand.
• Retain your exclusive trademark rights. Failure to monitor and take action can result in the loss of your trademark.
• Know your competition. By constantly monitoring your mark, you learn a lot about your potential competition. This is an advantage in staying first and foremost in the minds of your customers.
• Avoid lost revenue.  If a copycat provides good products or service, they siphon off your customers and weaken your brand. Which could prevent future expansion opportunities for your business.

How do I Monitor My Trademark?

There are a variety of ways to monitor or watch a trademark. The most common methods include:

1. Conduct Online Searches – conduct regular online searches for your mark. Include search engines, social media platforms, and other online resources to check for unauthorized use of your mark. You’ll also want to check the US Patent and Trademark Office (USPTO) for new filings that may create confusion with your mark, and industry publications to check for any unauthorized use of your mark within your industry.
2. Use a Trademark Monitoring Service – there are many services available to monitor your mark. What is included in the search varies from one service provider to another, so make sure you understand the scope of the search being provided. The upside to using a service is that many of them are less expensive than hiring a trademark attorney. The downside is that the service does not provide any legal analysis of the results, leaving you to figure out whether you should take action.
3. Hire an Attorney – an experienced trademark attorney will not only monitor your mark, but will provide legal analysis and guidance on how to handle any discovered infringement.

What Constitutes Infringing Use?

Infringing use of your trademark can come in various forms.  The easiest to find is identical use. If someone uses your trademark without your permission for the same goods or services identified in your trademark registration, that is infringing use.  But it doesn’t have to be your exact mark to be infringing.   If someone uses a mark that is similar to yours for similar goods or services, it can create confusion in the marketplace and dilute the distinctiveness of your mark. Similar marks may also constitute infringing use if the mark is confusingly similar.

What if I Discover Infringement?

If you discover any infringement of your trademark, you must take action to protect your brand. Just follow the three C’s:

1. Collect: Gather evidence of the infringement, including screenshots, images, and any other relevant documents. Make sure to include URLs and dates of capture.
2. Contact: Send a cease-and-desist letter to the infringing party, requesting that they stop using your mark immediately. Include proof of your ownership of the trademark, as well as documentation of their infringing use.
3. Consult: If the infringing party fails to comply with your cease-and-desist request in a reasonable time frame, you may need to file a lawsuit to protect your trademark. Consult with an experienced trademark attorney before taking this step.

Conclusion

In conclusion, monitoring your trademark is essential to protect your brand and maintain its distinctiveness. You can monitor your mark through various methods, including online searches, trademark services, and trademark attorneys. If you discover infringement, take swift action to protect your mark and your brand. Remember, your trademark is your business’s identity, so it’s crucial to monitor it regularly and take necessary action to protect it.

Is the idea of monitoring your trademark a bit overwhelming?  No worries, I’m here to help! I’ve just added Trademark Monitoring to my service offerings.  Book a trademark discovery call to learn more.