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Maintaining Trademark Protections

On Behalf of | Oct 4, 2021 | Intellectual Property

A trademark is an important part of any business’ intellectual property (IP) protection plan. Getting the trademark registered with the United States Patent and Trademark Office (USPTO) helps to better ensure that protections extend throughout the nation and can give you the ability to enforce those protections in the event a competitor attempts to use that trademark.

Once you have your trademark registered, you can sit back and relax, right? Not quite. Like most things in the legal world, it is a good idea to regularly review trademark protections to make sure they are still valid. In fact, according to the USPTO, trademark holders are required to take some action to keep their trademarks active.

When do I need to act?

In most cases, the USPTO will require the trademark holder to take action to preserve their trademark registration between the fifth and sixth year of the registration date, between the ninth and tenth years and again every 10 years after that.

What do I need to do?

The USPTO usually expects trademark holders to establish the following to maintain their trademark registration:

  • Use. First, it is important that you actually use the trademark. It is unlikely that you will be able to keep the trademark registered if it simply sits and goes unused. Exceptions to this requirement are rare, but the agency has noted that non-use due to extenuating circumstances stemming from the COVID-19 pandemic can result in a temporary exception.
  • Maintenance. The USPTO also requires trademark holders file required maintenance documents. This generally includes a signed declaration stating that you continue to use the trademark with the goods or services as stated within the original registration documents.

The USPTO can also decide to audit your trademark registration. The feds will expect more than a statement of use. If it deems the provided evidence of use is not sufficient, it could decide not to renew the trademark registration. This could put your ability to enforce the trademark in jeopardy.

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