Keeping Your Trademark Registration Alive

Obtaining federal protection for your trademark is a big deal.  It gives you a sense of achievement when you finally receive a shiny sealed Trademark Certificate of Registration from the United States Patent and Trademark Office (the “USPTO”).  Your trademark registration is an asset that will work for your benefit for many years.  The last thing you want to do is to lose this protection.  In this article, we will explore different ways of keeping your registration active and preventing an untimely death of your trademark.

First and foremost, you must continue using your mark in commerce. This use must be “proper” in the eyes of the USPTO.  There is an “ACID” test that will give you some guidance on how to use your mark properly:

  • Adjectives.  Trademarks and service marks are adjectives; they are not nouns or verbs. A mark should always be used as an adjective qualifying a generic noun that defines the product or service. A mark is a company brand name, not a product or service itself. 
  • Consistency.  The mark should be represented the same way each time.  Any and all references to a particular mark should be accurate and consistent. For instance, if a mark is highlighted or represented in all capital letters, one should consistently highlight the mark or use all capital letters when referencing that mark. 
  • Identification or Status.  The ® symbol should be used to identify a registered trademark or service mark. As a general practice, the TM symbol is recognized as identifying an unregistered trademark, and the SM symbol is used to identify an unregistered service mark. Although these symbols have no legal significance, their use has the preventative effect of indicating possible claims to trademark rights in the designations with which they are used. Other proper forms of notice for registered trademarks in the U.S. include: “Registered in the U.S. Patent and Trademark Office” and “Reg. U.S. Pat. & Tm. Off.”
  • Distinctiveness.  Trademarks and service marks should be displayed in a different font or manner to distinguish them from the surrounding text. 

Use of the mark in commerce is a prerequisite to keeping a trademark registration active.  There are maintenance documents to be filed with the USPTO, and they all require to submit evidence of how the mark is used in commerce.  While the USPTO does not require to submit evidence of use of the mark in association with every single item listed in your registration, a sworn statement attesting to the use of the mark in commerce on all of the goods and services listed in the registration must be entered into the USPTO’s record.  So, please take a note: if you would like to maintain trademark protection for all of the goods and services listed in your trademark registration, make sure you use your mark in association with all of them.

We cannot stress enough the importance of using the mark in commerce in the same manner, in which the mark appears in your trademark registration.  In our practice, we see it over and over again – one mark appears in the certificate of registration, and a similar but not identical mark is being actually used in commerce.  Here is an example – if you have a trademark registration for the mark KEEP YOUR TRADEMARK REGISTRATION ALIVE, anything short of the exact same match will not be accepted by the USPTO.  Any slight deviation in the wording or, sometimes, even punctuation may cause you to lose your trademark protection.  For instance, KEEP YOUR TRADEMARK REGISTRATION ALIVE! or KEEP TRADEMARK REGISTRATION ALIVE, KEEP YOUR REGISTRATION ALIVE – none of those deviations from the original mark will be accepted by the USPTO.  The mark that is used in commerce must be “substantially the same” as it appears in the trademark registration.  And often times our common sense regarding what would constitute “substantially the same” mark does not align with the views of the USPTO.  So, to avoid a potential battle with the authorities, remember to use your mark in the same manner as it appears in your registration.

Trademark registration maintenance documents are due between the 5th and 6th years of registration of the mark, between 9th and 10th years of registration, and then every 10 years.  These steps are necessary to keep your registration active.  As long as the mark is in use in commerce, and the required paperwork is filed with the USPTO within the prescribed timeframe, your trademark registration will be live.  If you need help with maintenance of your trademark registration, we are here to help.