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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.
Trademark monitoring is only valuable if it results in action when infringement is detected. The first line of enforcement is typically a cease-and-desist letter demanding that the infringer stop using the mark and provide written confirmation that it will comply. An effective trademark cease-and-desist letter: identifies the mark, its registration number, and the goods or services covered; explains specifically how the recipient’s use infringes; demands specific action by a specific deadline; and reserves all legal rights and remedies without prejudice.
A poorly drafted or legally incorrect cease-and-desist letter can backfire. Sending an overbroad demand that overclaims trademark rights may prompt a declaratory judgment action in which the accused infringer asks a court to declare that its use does not infringe — often in a jurisdiction unfavorable to the trademark owner. Trademark attorneys experienced in enforcement can calibrate the letter to assert legitimate rights firmly without inviting unnecessary litigation.
Naked licensing — permitting a licensee to use your mark without maintaining quality control — is one of the fastest paths to trademark abandonment. The rationale is that a trademark’s value lies in its function as a guarantee of consistent quality from a single source. When an owner permits wide use of the mark without enforcing quality standards, the mark can no longer function as that guarantee, and trademark rights may be cancelled in their entirety.
Courts have found naked licensing even where the parties had a written license agreement if the licensor exercised no actual quality control. In FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509 (9th Cir. 2010), the Ninth Circuit found naked licensing where a trademark owner permitted widespread use of its mark without enforcing licensing standards. Any trademark licensing program must include actual, documented quality control practices — product testing, facility inspections, sample reviews, or contractual audit rights — not merely boilerplate quality control language in the license agreement.
A registered trademark does not last forever without active maintenance. Between the fifth and sixth year after registration, the owner must file a Section 8 Declaration of Continued Use with the USPTO confirming that the mark is still in use in commerce. Between the ninth and tenth year — and every ten years thereafter — the owner must file both a Section 8 Declaration and a Section 9 Renewal Application. Missing these deadlines results in cancellation of the registration, and a cancelled registration cannot be restored retroactively. The USPTO offers a six-month grace period for late filings, but late filing fees apply and continued neglect results in permanent loss of registration.
One of the simplest and most frequently overlooked aspects of trademark protection is consistent use of the registered trademark symbol in connection with registered marks. Using the registered mark symbol on goods, advertising, and marketing materials provides constructive notice to potential infringers that the mark is federally registered. This matters in infringement litigation because a defendant who had constructive notice of registration cannot claim innocent infringement to reduce a damages award. The registered mark symbol may only be used with marks that are actually registered with the USPTO; using it on unregistered marks is a federal violation under 15 U.S.C. Section 1111. Unregistered marks should use the TM symbol for goods or SM for services to indicate an unregistered claim of trademark rights.
Protecting a registered trademark requires ongoing attention to monitoring, licensing discipline, maintenance filings, and enforcement. Revision Legal’s trademark attorneys offer flat-rate trademark monitoring services, draft and negotiate trademark licensing agreements, and represent trademark owners in enforcement actions from cease-and-desist through federal litigation. Contact us today to put a comprehensive trademark protection program in place.
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