Trademark Monitoring

Once properly registered, trademark registrations generally need to be maintained by filing the appropriate forms at specific points in time. The deadlines are:

• First Filing: The Declaration of Continued Use is due between the 5th and 6th anniversary date of the registration.
• Second Filing: The combined Declaration of Use and Application for Renewal is due between the ninth and tenth year.
• Subsequent Filings: The combined Declaration of Use and Application for Renewal is due every ten years thereafter.

You may seek assistance through Trademark USP to help with your renewal filings.

At the five year mark, assuming continued use of the mark, you may also pursue a “Declaration of Incontestability,” which provides additional protection under trademark law. This may prevent others from contesting the trademark on several common grounds, such as:

• the mark is not inherently distinctive;
• it is confusingly similar to a mark someone else began using first; or
• the mark is simply functional as opposed to identifying the source of the goods or services.

Often a trademark owner will send a cease and desist letter demanding that the infringing party stop using the mark. The infringement may not be on purpose and the infringing party may stop when notified that their conduct is in clear violation of another’s rights.

The infringing party may also ignore the demand or take the position that they are not infringing. At that point, you may consider a trademark infringement lawsuit. You should talk with an attorney if you believe a lawsuit might be the right choice for you.

Successful lawsuits have common characteristics and you should discuss with a lawyer whether any of these are present in your situation:

• The plaintiff is the owner of a valid mark - which is ordinarily presumed if they have a federal trademark registration
• The other side is using the mark without authority in connection with the sale of goods or services
• The other side is using the mark in a manner that is likely to cause confusion to reasonable consumers

It is possible to amend an application, but the process and the associated fees generally depend on the timing of the changes.

• Before Publication: Changes before the trademark has been published in the Official Gazette can be made by logging into your Trademark USP account and requesting that a change be made. Additional fees and filing fees to the USPTO may apply.
• After Publication: Changes once the trademark has been published in the Official Gazette generally require a Post-Publication Amendment, which you may request through Trademark USP.

Depending on the scope of the amendment, an applicant may need to file a new application instead. Changing the mark entirely, for example, would require a new application. Broadening the scope of a description of goods/services or adding additional classes may require additional fees and would also likely require a new application. Clerical errors, on the other hand, are generally easy to fix and typically won’t affect the applicant’s place in line or require a new application.

Yes, like any other business asset, a trademark can be sold, licensed or assigned. Validity requirements generally still apply, so someone usually needs to continue to use the mark in commerce and it is helpful to register assignments with the USPTO.

If you enter into such an agreement, we can help with a transfer of the trademark with the PTO. Sometimes, individuals register the mark before a company is officially set up. Then, once the company is formed, the mark needs to be transferred into the company.

According to the USPTO, trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services.

Trademark dilution is a second infringement theory alternative to consumer confusion. According to the USPTO, “a trademark owner may claim trademark ‘dilution,’ asserting that it owns a famous mark and the use of your mark diminishes the strength or value of the trademark owner's mark by ‘blurring’ the mark's distinctiveness or ‘tarnishing’ the mark's image by connecting it to something distasteful or objectionable—even if there is no likelihood of confusion.”

A Cease and Desist Letter is sent to an alleged infringer to put them on notice of the alleged infringement and gives them a deadline to stop infringing.

In many cases, an alleged infringer will voluntarily comply with the cease and desist letter and the parties often move on without any further action. If the cease and desist letter is ignored, it can be used in a lawsuit to show the alleged infringer was on notice of the infringement and yet continued in bad faith to willfully infringe. This may result in additional damages in a lawsuit.

A cease and desist order is not the same as a cease and desist order signed by a judge with the force of law. To get an order, a lawsuit has to be filed and the order must be obtained by a court.

To support a trademark infringement claim in court, a plaintiff must prove that it owns a valid mark, that it has priority (its rights in the mark(s) are "senior" to the alleged infringer).

That means if someone was using a mark before the person who registered it with the USPTO, they may be able to keep using it in the same manner they were before the USPTO issued registration. This senior use may, however, be limited to the use in its geographic area or without the ability to broaden the use of the mark to additional goods or services.

When a plaintiff owns a federal trademark registration on the Principal Register, there is a legal presumption of the validity and ownership of the mark as well as of the exclusive right to use the mark nationwide on or in connection with the goods or services listed in the registration. These presumptions may be rebutted in court proceedings.

The point is that just because someone else is using a similar mark, if they were using before the owner of USPTO registration, they may not be infringing.

If the trademark owner is able to prove infringement, available remedies may include the following:

• a court order (injunction) that the defendant stop using the accused mark;
• an order requiring the destruction or forfeiture of infringing articles;
• monetary relief, including the defendant's profits, any damages sustained by the plaintiff, and the costs of the action; and
• an order that the defendant, in certain cases, pay the plaintiffs' attorneys' fees.

Conversely, a court may find instead that (1) you are not infringing the trademark, (2) a defense bars the plaintiff's claim(s), or (3) other reasons exist why the trademark owner is not entitled to prevail. The risk to filing a suit is that sometimes courts will invalidate a trademark registration by ruling it is too generic and not worthy of protection notwithstanding the USPTO may have granted a registration.

To learn more about an efficient way to remove infringing material online, read more about our DMCA Takedown services.