Trademark Registration. Trademark.
Why is it that some clients don’t take the protection of their trademarks seriously….regardless of how insistent I am that they should? I have registered many, many trademarks for many clients. Once they receive their trademark, I even take time educating them as to the post-registration steps they MUST take. Yet, despite my imploring them to do the follow up, many choose not to. Once I have completed their registration, I remove myself as the attorney of record. At that time, it becomes their responsibility to do the following:
- 1. Continue to use their mark(s) as they said they were in the Statement of Use. This primary step is NOT to be taken lightly. Registered trademarks have been cancelled because the registrant did not continue to use the trademark in the EXACT way they claimed to use it in the Statement of Use.
- File a Declaration of Continued Use between years 5-6 after registration. I cannot stress that if you miss this step, you WILL lose your registration.
- Renew the trademark every 10 years after registration, which means 4-5 years after you file the Declaration of Continued Use, and every ten years thereafter.
- Monitor your trademark to make sure no one else is using it.
- If you discover someone is using it, ask them to stop. It is best that you consult with a competent trademark attorney to obtain guidance on the proper way to approach the situation. Why? If you send a scathing cease and desist letter without knowing what you are doing, your demand might backfire on you, and you can find yourself in the defendant’s seat.
Getting a trademark isn’t like buying a shirt, you put it in the closet and can forget about it. Your trademark is more like a car. It needs maintaining. It entails paperwork to keep it legal and current. It needs vigilance to keep it from being stolen. Finally, it needs a good mechanic (attorney) to make sure it keeps working for you.
In closing, if you don’t take care of your intellectual property, who will? Please remember that registration is just the first step, not the end all.