by Kelley Keller
Did you know that once you federally register a trademark with the U.S. Patent and Trademark Office (USPTO), your registration lasts forever as long as you do a few critical things?
Most people don’t realize that federal trademark rights are exclusionary. In other words, you don’t get any rights to something when you federally register a trademark but you do get legal rights to exclude others from doing something—using your mark in a way that could be confusing to consumers in the marketplace.
To keep those right to exclude others from using your mark, you have to take three steps and they all have specific timing related to them:
1. Continue to Use the Mark in Commerce as It was Registered
You can’t continue to exclude others from using a mark if you’ve stopped using it. In order to maintain your federal trademark registration, you have to keep using the mark in commerce. Furthermore, you have to use it in the way it was registered.
For example, if you registered your business name as a trademark to offer marketing consulting services, but later change your business to offer accounting services rather than marketing services, you didn’t continually use your mark in commerce in the way it was registered. Not only would it not be protected in its use related to accounting services (because it was never registered that way) but it also would no longer be protected in its use related to marketing services (because you didn’t continue to use it in commerce for those services).
Warning: If you fail to continually use your mark in commerce as it was registered, your registration could be cancelled.
2. File a Declaration of Continued Use
Before the end of the sixth year following the original registration mark, you need to file a Declaration of Continued Use. As the name says, you must declare through this document that the mark is still being used in commerce as it was registered. If necessary, you can request a six-month grace period after that date, but you’ll need to pay an additional fee to do this on top of the fee to file the Declaration of Continued Use.
Warning: If you don’t file the Declaration of Continued Use on time, your registration will be cancelled.
3. File an Application for Renewal and another Declaration of Continued Use
You also have to file an Application for Renewal and another Declaration of Continued Use before the end of every 10-year period after the original registration date. Again, you can request a six-month grace period if necessary, but you’ll have to pay an additional fee on top of the fee to file the Declaration of Continued Use and the Application for Renewal.
Warning: If you don’t file the combined Declaration of Continued Use and Application for Renewal on time, your registration will be cancelled.
Don’t Forget to Renew and Maintain Your Trademarks
Starting in January 2015, the USPTO will begin sending email reminders about upcoming post-registration filing deadlines, but there are limitations on who will receive these message. If you’re not sure if you qualify as someone who will receive email reminders about your trademark renewals, be sure to create your own reminder system.
Most importantly, don’t miss these renewal deadlines because once your trademark registration expires or has been cancelled because you failed to file the necessary maintenance documents, there is no way to revive that mark. Instead, you’d have to start from scratch with a new trademark registration application which is not only a hassle but can also be expensive and put your mark and your business at risk.
Kelley Keller, Esq. is President of The Keller Law Firm and a 20-year veteran of the intellectual property law field. As an intellectual property attorney, she has deep experience helping businesses of all sizes identify, manage, and protect their trademarks, copyrights, patents, and trade secrets, including many household brands like Toyota, Disney, and Verizon, which she worked with during her tenure at two of the largest IP law firms in Washington, D.C. Kelley also offers education to small business owners, creative and coaching professionals, digital entrepreneurs, and established companies about starting, building, and growing a Rock Solid Business on an strong foundation through her website KelleyKeller.com.
Kelley’s personable nature and ability to explain complex legal issues in simple terms set her apart from most attorneys. She is relentless in helping businesses, their owners, and their families mitigate risks and open the doors to new opportunities.