When a business selects a trademark under which a product or service will be sold, it hopes to develop brand loyalty among its customers and have them come to know the trademark in the market place. As part of the strategy to create a brand, it is prudent to seek federal trademark registration for the name in order to help protect the business’ rights to use the trademark.
Once a trademark registration has been obtained, it is important that the owner of the trademark take certain steps to protect the trademark and the value it represents.
Subsequent to registration, the Patent and Trademark Office (“PTO”) requires that periodic forms be filed to keep the mark “alive”. It is suggested that the mark owner create a calendar system to track the various filing deadlines for the marks. While many law firms will track the deadlines, due to the long time periods that are involved it is always prudent to have the owner of the marks keep track of the dates.
The owner of the trademark should monitor the use of their marks to make sure they are actually used in association with the products or services for which the federal registration was filed. This becomes particularly important if a number of marks are owned in a portfolio of trademarks. Without use of a mark, you may loose all rights in a mark. There is a presumption under federal law that if you do not use a mark for a three-year period, you are deemed to have abandoned the mark. While this presumption is reputtable, it is not something you want to try to rebut at an infringement trial. Best practice is to ensure that each mark in a trademark portfolio is used in commerce each year.
If a trademark is registered for a product, the mark must be used in association with the sale of the product “in commerce”. This means the mark must be attached to the product itself (for instance a label sewed to a piece of clothing) or affixed to packaging. If the mark is registered for a service, advertising of the services offered using the mark will be sufficient.
Also, as part of maintenance of your marks, you should make sure you always use a “™” symbol in association with your registered marks (and only your registered marks), and a “TM” next to your unregistered marks, for example: Coke™, or WidgetTM.
Third, you should monitor the use of your marks by competitors and third parties. It is important to take action against all infringers as soon as possible. If you turn a blind-eye to one infringer, or you let someone infringe a mark for too long, the legal doctrine of estoppels and latches may prevent you from enjoining that party from use of the mark, and may destroy your rights in the mark as to the world.
Diligence in the protection and maintenance of your trademarks can save money in the long-run and may help you avoid future costly litigation, as well as protect the name by which your customers have come to know your products and services.