Take Legal Action

If you discover that someone is using your protected mark, contact a lawyer who will take appropriate and immediate action, such as sending a cease-and-desist letter. (See appendixes of this book and the companion CD for a sample cease-and-desist letter.) Take this action without delay. The longer you wait, the more likely someone can argue you weren’t monitoring, thus protecting, your valuable mark.

Register the Mark

Register your mark with the USPTO. A trademark or service mark is entitled to protection even if you never register it. But there are clear benefits to registration. Here are a few:

 

1. Priority: You have the right to use your mark nationwide. Even if you are currently only using it in your local area, you have the right to expand.

2. Constructive notice: This simply means that no one can say, “I didn’t know you were using the mark.” The standard is that people know or should have known because all they had to do was a thorough search.

3. Right to sue: As a registered trademark owner, you have the right to sue in federal court (where it really counts) if someone infringes your mark.

4. Compensation: You have the right to recover lost profits, treble statutory damages, court costs, and attorneys’ fees.

5. Customs deposit: You have the right to deposit your registration with the customs office in an effort to track and stop the importation that bears the infringing mark.

6. Evidence of validity: You don’t have to further prove you are the trademark owner in the event you have to go to court to defend your mark. There is already the presumption that you are the owner because you have a valid registration.

7. Additional benefits of registration are that you have a valuable asset that can be sold, licensed, leased, or mortgaged. And such a valuable asset increases and enhances the goodwill of your company in the event you wish to sell the business down the road. Finally, there can be tax benefits to registering your valuable trademarks.

Renew the Trademark

A trademark lasts forever, as long as you continue to use it in connection with the goods and services stated in the registration application and renew it every 10 years. An application for renewal of registration must be filed within one year before your trademark’s tenth anniversary or within six months after the expiration date. You are also required to file a declaration of use between the fifth and sixth years after registration of your trademark. Because the USPTO doesn’t send renewal notices of any kind, you are responsible for meeting your deadlines. If you fail to file a declaration of use or a renewal application within that time, your registration will expire.

 

For More Information

For more information on how to protect your trademark and post-registration requirements, go to www.uspto.gov.

 

Your Trademark Workshop For this exercise, choose a mark you’re currently using but haven’t registered yet, or one that you intend to use. Answer the following questions: Are you using the mark? If so, when did you start using it? In what way are you using it? In relation to what products or services? Where do you use it, within your state? Nationally? Internationally? If you are using the mark, do you use the appropriate designation, such as TM or SM? If you currently are using a mark, have you allowed it to become generic? Do you use it properly? Are you monitoring the marketplace to make sure no one else is using your mark without your permission or a license? Have you registered your mark with the USPTO? If you’ve previously registered your mark, have you scheduled a date to file your declaration of use? Have you scheduled a date to file your renewal application?

 

Now that you’ve examined the steps required to protect your mark, if you haven’t already done so, let’s look at the actual registration process.