After waiting 12-18 months, trademark registration can often feel like the finish line. But, a certificate of registration is not the end of the trademark race, but merely the beginning.
Here are four things, we think trademark holders should know about their new registrations.
1. ANYONE WITH STANDING CAN PETITION TO CANCEL YOUR REGISTRATIONS
Petitions can be filed at anytime. The Lanham Act has a relatively low standard for standing.
To establish standing a party must plead that it has a “real interest” in the outcome of the proceeding. To plead a ‘real interest’ in the case, opposers must only allege a ‘direct and personal stake’ in the outcome. This is why we strongly encourage you to conduct a Pre-Filing Trademark Clearance Search prior to filing your application, so we can assess your level of risk (low, moderate, high).
At the end of the day, Trademark Examining Attorneys at the USPTO are human beings and can sometimes make mistakes. This is precisely what the trademark opposition period is for. Some examples of available grounds for opposition or cancellation are listed below:
(1) Likleihood to cause confusion, or to cause mistake, or to deceive.
(2) No use of the Trademark in commerce prior to the filing a 1(a) application.
(3)N bona fide intent to use the mark in connection with the identified goods/services as of the filing date of the application under 1(b).
(4) The owner is not ( and was not, at the time of the filing of its application for registration) the rightful owner of the registered mark.
(5) The Trademark has been abandoned due to nonuse with no intent to resume.
(6) The Trademark would dilute the distinctive quality of a famous mark.
(7) The federal registration symbol was missued with the intent to deceive the purchasing public or others in the trade into believing that the mark is registered.
(8) Fraud was committed during registration or prosecution the application.
(9) The mark is generic.
However, once a Tradedmark registration is more than 5 years old it does become more difficult to invalidate.
2. YOU SHOULD KEEP & MAINTAIN RECORDS OF FIRST USE
The USTPO does not require that you submit proof showing the date of first use in commerce, however, you should always keep a copy of such an invoice for your records. If another challenges the validity of your trademark application/registration by questioning your first use dates, having records showing the first use will better position you to win that fight.
3. YOU ARE REQURIED TO MAINTAIN YOUR TRADEMARK REGISTRATIONS
Once you own a trademark registration, you must file certain documents at regular intervals to show that you're continuing to use your trademark in commerce. The USPTO is not obligated to send reminders of these deadlines, and failure to receive a reminder does not excuse you from meeting your statutory filing obligations. Failure to timely file these document, pay associated maintenance fees, and delete goods or services promptly if no longer in use can result in abandoment or cancellation of your registration(s).
4. YOU HAVE A DUTY TO MONITOR AND PROTECT YOUR TRADEMARKS
The USPTO registers trademarks, but it does not monitor or enforce them—that’s up to YOU, the trademark owner. This means you should actively monitor your Trademarks for unauthorized use or attemps to register confusingly similar marks on the Principal or Supplemental database.
Many business owners choose to hire our Firm to monitor for infringing action and deliver them a weekly, monthly or quarterly report detailing any potential infringement and notifing them of any action needed and/or upcoming filing deadlines. Contact us to request a flat fee quote for this service.