Maintaining a U.S. trademark registration requires certain post-registration action. The following is a brief summary of the most important actions a registration should take or consider taking to maintain a trademark (or service mark) registration.
Continue Using the Mark
Continue using the mark in commerce in a consistent and non-generic manner. Such usage should be prominent enough to be recognized as a distinctive mark by consumers. Also ensure use is proper trademark usage, as an adjective that modifies a noun rather than as a noun or verb. Abandoned marks are subject to cancellation. For marks registered based solely on foreign priority, use in or with the USA must begin within three years of registration or be subject to cancellation or expungement.
Use Registration Symbol
It is recommended to use the registration symbol ® with a mark in jurisdictions where registered, or alternatively the ™ symbol. At least the first or most prominent appearance of the mark on a given article, advertisement, etc. should carry such a symbol. Use of “Registered in U.S. Patent and Trademark Office” or “Reg. U.S. Pat. & Tm. Off.” is also permitted for U.S. federally registered marks as well. For U.S. federal rights, there is no legal requirement to use ® or ™ symbols or the like (that is, marking is not required) in order to preserve rights in a mark. However, U.S. federal law does say that failing to use the ® symbol or an equivalent phrase can limit monetary recovery for infringement of a registered mark.
Note that some jurisdictions prohibit the use of the ® symbol with an unregistered mark. So be careful about usage across multiple jurisdictions—the ™ symbol can be used instead with a mark that is unregistered in a given jurisdiction.
If a mark is licensed for use by another, the mark owner must maintain control over the quality of the associated goods and services. Any such license should be in writing and should include an explicit quality control provision.
Retain Evidence of Use
It is recommended to periodically collect and retain in your records evidence of use of the registered mark in commerce in the U.S., particularly if not routinely documented in the ordinary course of business. Such evidence can be useful as a specimen of use or to defend against a challenge to the registration by another entity. If registration was filed on an intent-to-use (ITU) basis, or a foreign priority basis with an intent to use in the USA, it is further recommended to retain written records of that intent at the time of U.S. filing, such as detailed business plans.
Evaluate Expanded or Changed Use Over Time
If your use of the mark has expanded to encompass new or different goods/services that are not identified in the registration, it may be worthwhile to pursue an additional registration to ensure full protection. If use has ceased with some but not all of the goods/services identified in the registration, an amendment can be filed to delete only the unused goods/services. If your branding has changed, such as a “refresh” that materially alters the commercial impression of a graphical logo or the wording of a mark, it is important to evaluate whether the that new usage supports the existing registration and whether a new application should be filed.
Make Required Filings and Renew the Registration
If the owner’s name or address has changed, official records must be updated.
Maintaining a U.S. federal registration also requires submission of a Declaration of Use, with supporting evidence, between the 5th & 6th years of registration. Additionally, renewal is required between the 9th and 10th years of registration and at ten-year intervals after that, each such requiring a Declaration of Use and supporting evidence. Madrid Protocol extensions to the USA further require that the underlying international registration be maintained.
Beware of misleading, official-looking notices sent by private entities seeking payment of trademark-related fees as scams. Have a trusted trademark attorney review such notices if in doubt about whether they are a scam.
More information about maintaining trademark rights is available here.
More information about strengthening protection of a registered trademark is available here.
Austen Zuege is an attorney at law and registered U.S. patent attorney in Minneapolis whose practice encompasses patents, trademarks, copyrights, domain name cybersquatting, IP agreements and licensing, freedom-to-operate studies, client counseling, and IP litigation. If you have patent, trademark, or other IP issues, he can help.