Entrepreneurs often have a mindset like a bear trap when it comes to trademarks. They see them as the legal gateway to competitive advantage. The logic goes: once you get a federal trademark registration, your competition is locked out. While it never quite works that way, entrepreneurs often overlook the necessary steps to “care and love” for their trademark after it is registered. And failing to tend to a registration can cost them their rights and competitive advantage. Below are the basic post registration filings and practices that are necessary to maintain your trademark.
To Be Used Is To Be Loved
The most important way to take care of your trademark is to actually use it. In simple terms, it means that you can’t put your trademark in moth balls once it’s registered. Rather, it should prominently be featured in your marketing and branding campaigns. This “use” of the mark is the gold standard for the US Patent and Trademark Office (“USPTO”) to maintain the trademark’s registration. And as further described below, that is exactly what you will show the USPTO.
Declaring Use Through a Section 8 Filing
A section 8 filing is required after the fifth year of a trademark registration and every tenth year after the registration. In classic TV show military parlance, a Section 8 referred to getting “let go” from the Army because of a mental issue. In the case of a trademark, the section 8 is the exact opposite. It is a statement by you, the trademark holder, about the all important issue of use. What the filing says to the government is that you are actually using your trademark (or in the worst case gives an excuse as to why you aren’t).
Failure to file the section 8 paperwork could result in the cancellation of your trademark. And after putting in the time and money to get one, this is an outcome that you cannot afford.
Becoming Incontestable, Not Invincible with a Section 15 Filing
Beyond a young trademark, a more mature trademark that has been in “use” for some time enjoys greater privileges. And after five years, a trademark that has been in use continuously can acquire a presumption on the part of the government that it is incontestable through a section 15 filing. Effectively this means that third parties that seek to contest the validity of the trademark (just because one’s trademark is registered does not mean it cannot be attacked for a variety of reasons to weaken or cancel the registration) will have to break through another layer of protection. While the registration is not a guarantee (no “invincibility” here) it is a strong validation of the technical and legal elements that comprise it. (From the USPTO: “An “incontestable” registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 1115(b).”)
Renew, Reuse, Recycle with a Combined Section 8 and 9 Filing
Like nearly all government permits, a trademark registration has to be renewed nine years after registration and before ten years following registration. Again as with the other filings, this filing is a declaration that you are using the trademark. It is a common best practice to file the section 9 in conjunction with a section 8, since the timeframe for the section 8 (in this case the second section 8, since one would have filed one five years prior) overlaps with the section 9. Failing to renew like the other filings can cost you your trademark.