Trademark Owner's Responsibilities

By Colin Holloway

Holding an official trademark registered with the federal government gives you the right to exclusively use your mark, but it does not come without responsibility. If you have a trademark registered by the U.S. Patent and Trademark Office, there are ongoing requirements to meet in order to maintain and enforce its exclusive use.

Initial Trademark Maintenance

Registering a trademark does not mean that you hold it forever, and the USPTO requires you to maintain the mark starting with a declaration of use filed between the fifth and sixth year after registration. Declaring your continued use is accomplished by filling out and filing a “Declaration of Use Under Section 8” form with the USPTO. A Section 8 declaration requires the owner to issue a sworn statement that she continues to use the trademark. The form is available on the USPTO website, where it can be filled out and submitted electronically.

Ongoing Trademark Renewal

Trademarks require continued renewal starting with the period between the ninth and 10th year after the initial registration, and continuing between every ninth and 10th year after that. In order to maintain your right to a trademark, you will need to file a combined “Declaration of Use and Application for Renewal under Sections 8 and 9” with the USPTO. A Section 9 application is the USPTO’s renewal procedure, and requires the trademark owner to submit a form requesting renewal and submit the appropriate fee. The forms are available on the USTPO website, and can be submitted electronically.

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Protecting a Trademark

If you hold a trademark, it is up to you to make sure that your mark is not used by another company, diluted or made generic. A trademark is considered diluted if another company, usually in a different industry, uses a mark that is similar enough to the registered trademark such that customers could confuse the two. A trademark becomes generic when it is used so often that it becomes associated with a general category of products rather than the particular product offered by the owner of the mark. Whether infringing use copies a trademark, dilutes it, or attempts to make it generic, enforcing a trademark is the responsibility of the person who holds it, and doing so may require legal action against the infringing party.

State and Common Law Trademarks

Owners of state registered and common law trademarks do not share the ongoing responsibility to renew and register their mark with the USPTO, but have other responsibilities. Holders of a trademark in a specific state must comply with state regulations, a list of which can be found on the USPTO website. Common law trademarks arise from simply using the logo or phrase in commerce to describe your product. They don't require upkeep beyond enforcing the mark against infringing users. Common law trademarks are limited to the area that the user of the mark operates in, so a company in another state can use the mark without infringing on it. Owners of a common law trademark must continue using the mark, and actively protect it against unauthorized use.

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If you have an idea for a trademark design that you want to use exclusively for your business, you should consider registering the trademark with the United States Patent and Trademark Office. Once you register the trademark, you have the legal right to use the trademark exclusively. In the event that another business uses the same or similar trademark, you can seek legal protection in federal court for the trademark infringement.

How to Apply for a Trademark

A trademark is a distinct design, symbol and/or phrase that distinguishes and identifies the services and goods of a company from other entities. Registering a trademark with United States Patent and Trademark Office (USPTO) gives a business exclusive use of the mark. It also gives businesses the right to use the federal registration symbol for trademarks. The USPTO offers online registration of trademarks.

Trademark vs. Service Mark

Trademarks and service marks serve essentially the same purpose, but there are slight differences in how they're applied and communicated to your market. Both are administered by the United States Patent and Trademark Office. This agency processes registrations for trademarks as well as service marks. Registration isn't mandatory, but it provides additional legal protection in certain situations.

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