How Do You Maintain a Trademark?
And is it worth hiring a Colorado attorney to help you do so?By Super Lawyers staff | Reviewed by Canaan Suitt, J.D. | Last updated on May 4, 2023 Featuring practical insights from contributing attorney Miriam D. Trudell
Use these links to jump to different sections:
- Trademark Law: Use in Commerce
- Maintaining Trademark Protection: Declaration of Use and Renewal Filings
- How a Colorado Lawyer Can Help You Protect a Trademark
In the modern business world, branding matters—and trademarks are one of the most valuable forms of intellectual property. A trademark is a symbol, word, or phrase that serves as a source signifier. To protect your company’s service mark, you can register it with the United States Patent and Trademark Office (USPTO). That being said, trademark rights are not permanently guaranteed by the USPTO.
This raises an important question: How do you maintain your trademark rights?
The short answer is that you need to use it and you need to file periodic Declarations of Use and renewals. “The main way that most trademark owners can lose a trademark would be to stop use of it,” says Miriam Trudell, an intellectual property attorney at Sheridan Ross in Denver.
Trademark Law: Use in Commerce
Under federal law, a trademark is only valid if it is being used. “[That] means, for a product, to use it on the product or product packaging,” Trudell explains, adding that the product must be shipped in commerce that Congress can regulate. “For a service, it means to continue to advertise and render the services.”
To register and maintain a trademark at the federal level, a business or organization must prove that its application satisfies the commercial use requirement.
As explained in the Trademark Manual of Examining Procedure (TMEP), an applicant must have a “bona fide” commercial purpose for their trademark.
Beyond demonstrating commercial use to get a trademark registration approved in the first place, trademark holders are required to maintain that use. If commercial use lapses, trademark protection will eventually lapse as well.
Maintaining Trademark Protection: Declaration of Use and Renewal Filings
The USPTO imposes an active obligation on trademark holders. Maintaining continued commercial use is not sufficient to keep trademark protection—a business or organization also needs to file trademark maintenance Declaration of Use and renewal documents.
The basic timeline for filing these maintenance documents is as follows:
- The initial trademark Declaration of Use must be filed between the fifth and sixth year after the registration date.
- After the initial Declaration of Use, subsequent Declarations of Use combined with a renewal application must be filed every 10 years after the registration date.
- Both the six- and ten-year anniversary deadlines have an available six-month grace period, although filing within this grace period requires an extra fee.
What goes into a Declaration of Use and combined Declaration of Use/renewal application?
“You have to review the products and services in the registration and confirm what is currently in use,” Trudell says.
For a product, the filing has to include a declaration form and proof of use, which can be a photo of the product displaying the trademark on a label or box. Proof of use can also be shown with a picture of an online shopping cart page where a picture of the product and the trademark appear, and where a customer can add the product to a shopping cart. For services, proof of use would include an advertisement. A brick-and-mortar store can submit a photo of the store itself as proof of use.
“But the trademark office has gotten quite strict in the last two years or so,” Trudell cautions. “If you have more than two or three products or services listed, the trademark office will want to see a picture of use of the trademark on every product listed, and for the services, every service listed.”
It is important to emphasize that trademark registrations are not automatically maintained by the federal agency. A company or organization must submit valid Declaration of Use and combined Declaration of Use/renewal filing that clearly demonstrates continued commercial use.
How a Colorado Lawyer Can Help You Protect a Trademark
Trademark rights matter, and not every registration maintenance filing is as straightforward as it may seem.
That’s where a lawyer can help.
First, a lawyer will ensure that critical deadlines are met. “The mailing of reminders of deadlines is not perfect,” Trudell says. For the Declaration of Use and combined Declaration of Use/renewal deadlines, “[the trademark office] also only sends out a reminder a year before, which is the earliest it can be filed. And if you by mistake delete that email, then you won’t have another reminder.”
The forms are another area where lawyers can help. While some registrations are fairly simple, others can get complicated. Messing up the paperwork can lead to a rejection, and if you don’t resolve the problem, the entire registration can be canceled.
Among other things, a Colorado trademark attorney will:
- Schedule and prepare all trademark Declaration of Use and combined Declaration of Use/renewal filings.
- Ensure that bona fide commercial use is maintained.
- Monitor any third parties filing that may impinge on your IP rights.
In some cases, businesses may be worried about other companies infringing on their trademark rights. To maintain your trademark and protect your interests, it is imperative that infringement is addressed as soon as possible.
If you have any specific questions or concerns about maintaining a trademark, an experienced Colorado trademark lawyer can help.
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