Trademarks are one of the four types of intellectual property (IP). The others are:
- Trade Secrets
Today we are looking closely at trademarks, but if you’re interested in learning about other forms of IP, you can read more here.
What Is A Trademark?
Trademarks protect words, slogans, and/or designs that identify brands selling goods or services. For example, a trademark will protect a trade name (i.e., McDonald’s), a slogan (i.e., “I’m Lovin’ It,”), and a logo (i.e., golden arches).
Trademarks serve a dual purpose: to protect the public from confusing brands and to protect businesses’ investment in their corporate brands. Trademarks help businesses protect a brand’s identity, what distinguishes it from competitors, and what makes it desirable. Dually, trademarks help consumers distinguish one product or service from that of another, and help them make informed choices.
If a trademark accurately represents a business’s offerings, it is important to apply for federal or state registration (as applicable and when available). If unregistered, the trademark will depend upon statutes under state law as opposed to federal law and its administrative agency, the United States Patent & Trademark Office, or the Copyright Office (as applicable), for protection and enforcement.
Enforced trademarks will protect against designs or words that have a “likelihood of confusion.” This means that anyone who uses a similar or identical trademark in the United States could be liable under federal or state laws, or both. This standard of review for registrations reflects the other purpose of trademarks: to protect consumers from accidentally buying unintended goods or services.
How Long Does a Trademark Last?
A trademark can last for as long as there is a body of law to support it in the United States and internationally if owners take proper steps to renew registrations every 10 years. If the mark is in use between the 5th and 6th year from registration, the window for renewal is open. To renew after the 6th year, the owner must submit the Trademark Renewal application every 10 years from the mark’s registration.
Three Steps For Registering & Renewing a Trademark:
- Register Your Trademark – This can be done electronically using the Trademark Electronic Application System (TEAS). If you’d prefer to register your mark on paper, you can acquire a hard copy by calling 800-786-9199.
There are 10 main parts to the registration application:
- Applicant’s name and address
- Applicant’s citizenship and legal entity
- A name and address for correspondence
- A drawing of the desired mark
- A description of/ type of mark
- The class of services or goods
- The basis of applicant’s use (e.g., whether current or intended use)
- An example of the use (i.e., specimen) including the date the applicant first used the mark, and first used the mark in commerce (if use-based claim)
- A dated signature from you or an authorized representative
- The application fee
- File a Declaration of Use – While you can apply for registration of a trademark not currently in use, if you wish it to grant, or renew, the mark must be in use. You may submit a Statement of Use after a Notice of Allowance in a pending application, then a Declaration of Use at renewal milestones through TEAS.
It is the sole responsibility of the filer to submit these maintenance documents on time. The U.S. Patent and Trademark Office (USPTO) will only send a Declaration of Use reminder to the email of record, so if you are no longer using that email it is important that you keep track of your own deadlines to make sure you file on time.
If COVID-19 has directly impacted you or your business and temporarily prevented you from using your trademark, read more here.
- Trademark Renewal – Between 5th and 6th then 9th and 10th years from grant, you must file a renewal application for registration if you are still using the trademark. Additionally, you must continue to file a renewal application every 10 years thereafter while it remains in use for your registration to remain in force.
Every subsequent decade, your trademark must be renewed.
Trademark Renewal Requirements
The maintenance file submitted to USPTO for Trademark Registration Renewal will require:
- A Declaration of Use – Previously mentioned, this form – also known as a Section 8 Affidavit – will need to be submitted for every renewal. It confirms that you, the trademark owner, continue to use the mark as it was originally issued. You will include proof (i.e. specimen) of use, such as a photograph of your logo being used on products.
- A Declaration of Incontestability – Also known as a Section 15 Affidavit – this is available if you have not received any allegations of infringement of use of your mark in the time since registration to the Section 8 renewal. It states that your trademark can not be challenged (i.e., is incontestable).
There is a six-month grace period for filers who miss their renewal deadline with the consequence of additional fees and payment. If you fail to renew your trademark within the duly allotted time frame, you risk trademark cancellation by the USPTO. The consequences of this are much more dire as once the trademark is canceled, it cannot be reinstated.
If your trademark has been canceled or has expired, it can still be protected under common law protection given that you continue to use the trademark for its original purposes. It is much safer, however, to keep up with renewal deadlines to ensure your IP is fully protected. If your trademark is infringed upon, common law protection will make it more difficult to sue as the presumption of ownership that exists with a trademark, will not be assumed in court.
The best way to know that your intellectual property is fully trademarked and that the registration, Declaration of Use, and trademark renewals are filed properly is to consult with a small business lawyer. Particularly one well-versed in IP law.
Lee Morin, Principal and Founder of Morin Legal, has 18 years of professional experience in intellectual property law. Of that, we have 10 years of experience in United States trademarks, copyrights, and trade secrets.
Coupled with a background in patents and working relationships with a global network of IP attorneys, we identify your ideas, creations, and brands and develop a strategy to help you fiercely protect them. We also offer guidance for developing and maintaining a portfolio of your intellectual assets.
Feel free to schedule a consultation.