08 Mar Policing and Protecting Your Trademark
Congratulations! You got your trademark registered with the US PTO. You have an officially registered trademark blessed by the United States government. If you think that was the hard part, it is not. Now comes the hard part of policing, protecting, and maintaining your trademark.
Let’s start with the basics. In order to maintain the trademark, you must continue to actively use the trademark in commerce. What using the trademark in commerce means is that you must continuously and actively advertise, promote, and attempt to sell your goods and services to customers or prospective customers. If you failed to use the mark in commerce for any significant period of time, a competitor may move and ask the US PTO to cancel the trademark. Trademark cancellation proceedings are time-consuming and expensive. It is far cheaper to keep using the trademark in commerce than to risk a cancellation proceeding.
In terms of a cancellation proceeding, a significant period of time is going to be based on the type of goods or services you are selling. There is no set or a specific period of time and each cancellation proceeding is very much fact dependent.
So long as you are using the trademark in commerce, you will only need to file a statement of continued use with the US PTO every five years. Filing a statement of continued use simply involves paying a small fee, of course, and submitting to the US PTO samples of your trademark in use. This statement of continued use is filed between the fifth anniversary and the sixth anniversary of your trademarks registration date. Although failure to file within that one-year period can be corrected, it is best to not forget to do it. One of the consequences of failing to file the statement of continued use is that a competitor or someone looking to register a similar trademark may file a cancellation proceeding.
Moral of the story, file your statements of continued use.
The next issue is policing your trademark. By policing I mean checking to make sure that someone else is not attempting to file a confusingly similar trademark. While the US PTO will check to see if there are conflicting trademarks during the registration process, the US PTO does not look at how the trademark is used in commerce and they may not catch trademarks that may be similar to your trademark during the registration process. The US PTO does not police nor acts to protect any registered trademark, that is the role of the trademark owner.
The trademark owner can get a trademark monitoring service to examine new registration applications and usually includes the Internet, business name registration, and state trademark registrations to see if anyone may be infringing on your trademark. Trademark monitoring services can range from $10 to more than $100 for monthly monitoring services depending on the options you choose and the company you hire. Be sure to investigate carefully the levels of services you get and make sure the services suit your needs.
Next, let’s assume that you suspect someone of infringing on your trademark. First, don’t be that guy who issues a nasty cease and desist letter with unreasonable deadlines and empty threats. Most of the time someone who is using a business name or logo that looks like your trademark is probably doing so without knowing that you have a registered trademark. A far better course of action is to pick up the phone and talk to the person to see what the situation is rather than sending what I call a nasty-gram. As I said, most people who may be “infringing” on your trademark are not doing so intentionally or with an effort to undermine your business. Most people just didn’t check before beginning their business or using a particular business name or logo. If you place a phone call or send a polite letter, chances are you can come to a reasonable settlement in a reasonable period of time without costing an unreasonable amount of money. Whatever you do, don’t make a phone call or send a letter with a ridiculously short period of time to stop using the trademark. I once had a client who received a cease-and-desist letter seven days before Christmas and demanded my client stop using the trademark in five days. Ultimately the matter was resolved, but the trademark holder had acted excessively harsh when they didn’t need to.
Businesses, even those who did not intend to infringe on your trademark, spend thousands or tens of thousands of dollars developing their brand and their identity, just like you. While I am not suggesting you give away the store or the trademark, being reasonable goes a long way to resolving trademark disputes. If it means a business on the other side of the country may have a similar trademark as you for three or four or five months, it may not be the end of the world and certainly is not likely to cut into your business.
Now, if your attempts at being polite, reasonable, and informal fail or fall on deaf ears, then you can begin to be more assertive in your demands for the infringer to stop using your trademark. You can try more forceful letters and you can even file a suit for trademark infringement including asking for a temporary restraining order or injunction to prohibit the unauthorized use of your trademark. However, because lawsuits are expensive I don’t recommend breaking out the big guns of litigation until you have to do so.
I hope you will never get to the point that you have to file a trademark infringement lawsuit, but if you do having a documented history of reasonable attempts to address the matter with the potential infringers will make you look better in the eyes of the jury.
Three takeaways
- The best way to maintain your trademark is to make sure you use the trademark continuously in commerce.
- Use a trademark monitoring service to ensure that you have a better chance of learning about a potential infringement before it becomes a larger problem.
- Protecting your trademark does not mean running for the courthouse door whenever there is a potential infringement. Be polite, professional, and firm in your communications with businesses who may be using a similar trademark without any intention of infringing on your trademark.
If you have any questions about trademarks or protecting your trademark please give me a call.