Three Ways To Protect Your Registered Trademark featured image

Three Ways To Protect Your Registered Trademark

by Eric Misterovich

Partner

Trademark Law

2000px-RegisteredTM.svg 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 Monitoring

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.

Trademark Licensing

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 Renewals

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.

 

Extra, Extra!
Recent Posts

Does the AI-Copyright Legal Fight Represent a National Security Threat?

Does the AI-Copyright Legal Fight Represent a National Security Threat?

Copyright

The holders of copyrights for newspapers, magazines, books, and other publications are involved in numerous legal battles with owners of AI modules over alleged copyright infringement. The plaintiff copyright owners claim that the AI large language modules have been trained on huge quantities of copyrighted materials without permission and — most importantly — without payment. […]

Read more about Does the AI-Copyright Legal Fight Represent a National Security Threat?

How Does Buy-Sell Insurance Work For An Owners’ Agreement?

How Does Buy-Sell Insurance Work For An Owners’ Agreement?

Corporate

The owners of most small, closely-held businesses negotiate and sign some form of an “Owner’s Agreement.” An important part of such Agreements is the “Buy-Sell” provisions. These are often some of the most difficult to negotiate. The gist of the buy-sell part of the Owners’ Agreement is to establish the rules for what happens if […]

Read more about How Does Buy-Sell Insurance Work For An Owners’ Agreement?

Status on Social Media Moderation Statutes and Cases

Status on Social Media Moderation Statutes and Cases

Internet Law

Social media content moderation by technology platforms was one of the “hot” legal topics in 2023-2024. Three States — California, Texas, and Florida — passed different statutes to either require more content moderation (California) or to limit such moderation (Texas and Florida). All the statutes, in one way or another, demanded more transparency and information […]

Read more about Status on Social Media Moderation Statutes and Cases

Put Revision Legal on your side