Proper Trademark Care

Posted Friday, May 30, 2008 by Jim Ruttler.

Federal registration of a trademark is only the first step to protecting trademark rights. Once a registration is obtained, it is necessary to properly care for the trademark to prevent erosion, cancellation, or unenforceability. The primary steps for proper care are as follows.

First, you must continuously use your trademark with the ® symbol on the goods or services listed in your registration. And, you must document the use of your trademark so that you can prove its continuous use if necessary. Documentation should include sales and advertising figures and locations, dated samples of advertisements, dated samples of labels, and dated pictures showing the trademark being used on the goods.

Second, you must police the market for potentially confusingly similar trademarks and monitor trademark applications. The existence of similar trademarks erodes the strength of your trademark. And, trademark applications that mature into registrations are extremely difficult and expensive to eliminate. One way to police the market is to use a trademark watching service to automatically monitor new federal trademark applications. Such a service will automatically notify you whether a federal application for a similar mark has been filed so that you can consider whether to file a letter of protest or opposition to impede the application before it matures into a registration and acquires its presumption of validity.

Third, you must file Section 8 and 15 affidavits with the U.S. Trademark Office between the 5th and 6th years after registration and Section 9 and 15 affidavits between the 9th and 10th years after registration. After the first ten years, you must only do the latter every subsequent 9th and 10th year. Failure to do so will result in cancellation of your trademark registration and will severely compromise your trademark rights.

Fourth, you should record your registration with U.S. Customs & Border Protection. Doing so offers you significant and inexpensive protection against imported counterfeit goods bearing your trademark. U.S. Customs maintains a trademark recordation system for trademarks registered with the U.S. Trademark Office. U.S. Customs agents use this recordation system to monitor imports at all 317 ports of entry to seize counterfeit goods before they even enter the U.S. market. You will receive detailed notices of any such seizure, including country of origin and addresses of the exporter and importer, so that you can take appropriate action. Without recordation, U.S. Customs will not deny entry to counterfeit goods and your only remedy is expensive civil litigation for trademark infringement.

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