Now that you are an owner of a registered trademark with the United States Patent and Trademark Office, there are few things you should know about how to best protect your new property. In this article, we’ll discuss three of the ways in which you can protect your trademark.
Trademark owners have a duty to monitor the use of their trademarks. This is important because only one business or individual should be using a particular mark in connection with a specific good or service. Trademark law is designed to protect the public and prevent confusion in the marketplace. If others are using your mark in connection with similar goods or services, the public may be confused as to the source of the good or service itself. This is a problem. As a result, it’s a smart move to monitor how your trademark is used in commerce. Revision Legal offers trademark monitoring services for a flat rate for a period of 12 months. To learn more about trademark monitoring, please click here.
Anytime you permit another individual or another business to use your mark, you should have a trademark licensing agreement in place. Similar to trademark monitoring, trademark owners have a duty to police how other people use their marks. If you are going to allow another person to use your mark, you need to have an agreement in place that sets out standards and provisions for monitoring quality control, price, and the use of the mark in general. These provisions are may be the most important part of a trademark licensing agreement, because they retain your quality control measures over the ultimate good or service.
If you permit many people to use your mark without these policing measures in place, you run the risk of losing your trademark rights in whole. Specifically, you run the risk of falling into a situation called naked licensing. In short, naked licensing is when there is widespread use of your mark with no quality control or policing provisions in place. If you are found to be engaged in naked licensing, you will lose your trademark rights.
To avoid running the risk of losing your trademark, it’s essential that you enter into a trademark licensing agreement anytime you’re permitting a third party to use your mark.
Trademark owners are required to file a renewal of their trademark between the fifth and six years after registration and then ninth and tenth year after registration. While this may seem like a simple process, it is extremely important. If you fail to file these trademark renewals within the USPTO’s TEAS system, you run the risk of losing your trademark rights in total. To ensure that your marks are protected and renewed, it’s best to engage in a dual calendaring system that will accurately notify you when trademark filings are required.
It’s also important to file a Declaration of Incontestability between the fifth and sixth year after registration. A Declaration of Incontestability provides your mark with greater protection from any challenges to your trademark rights, particularly in any trademark cancellation proceedings. Again, this is a relatively simple process; however, it’s fundamental that you timely file these forms within the USPTO. A Declaration of Incontestability will provide your mark with great strength and protection as you move on in your business.
For assistance and calendaring and docketing and filing of trademark renewals and Declarations of Incontestability, please contact Revision Legal’s experienced trademark attorneys today.