Be A Brand Boss 👑 💪🏾 👑. Maintain Your Trademark Registration Like The Boss That You Are.
Brand building is, by far, one of the most fun aspects of my job as a lawyer and in my role as a business owner. I’m actually in the middle of a new marketing campaign, and I’ve been knee-deep in designing all sorts of marketing pieces (fun, not fun). Establishing trademark rights is relatively uncomplicated. When you use the mark in connection with selling goods and service, voila, you have created a trademark. Like most things in the law, however, there can be complications. Details such as timing, use, and geographic scope can cause hiccups if proposed brands aren’t searched and subsequently cleared through a legal opinion. So, to alleviate various risks associated with building brands, I usually suggest my clients consider a federal trademark registration. Obtaining a trademark registration at the United States Patent & Trademark Office is perhaps the most predictable way to establish trademark rights. The process is not without a few frustrations, but I think well worth it in the end. Clients are very excited to receive their trademark registration from the USPTO, but that’s not the end of it. To get the most value from a USPTO registration, there a few things you will need to do.
👑 Understand the register.
Know which register on which your mark is listed. Trademarks are registered on either the Principal or the Supplemental Register. The Principal Register provides a presumption of validity and ownership. When a mark is registered on the Supplemental Register, your mark is not presumed valid, nor are you presumed the owner. When your mark is on the Principal Register, after five years of use, the owner of the mark can file documentation at the USPTO asserting the mark is incontestable (which means the mark can not be challenged on certain grounds).
👑 Be consistent.
Use trademarks in accordance with your registration. Trademarks and service marks should be used consistently, and according to the branding you provided to the USPTO. Sometimes, trademark protection which becomes registered is very broad, and sometimes the protection sought and received is very narrow. If your registered trademark is limited to a style of font, color, punctuation, slogan phrase, etc. then you should use the mark accordingly. People are notorious for changing things up in a way that is ‘off-brand’ from their registration. Doing this can make it difficult to enforce the mark in court.
👑 Monitor usage.
Monitor for potential usage of your mark by other companies. Monitoring usage can be a little tricky to execute. While it’s pretty easy to set up a Google alert or work with your lawyer to monitor similar marks at the USPTO, once the potential infringement is detected, you’ll want to do something about it. Enforcing your trademarks can be expensive, and without a plan to pay for the legal expenses, enforcing the mark could prove difficult.
👑 Provide notice.
Give the public notice, either constructive or actual. Giving the public constructive notice can be as straightforward as using ® with the brand or providing written notice on printed or digital content that states the subject marks are “Registered trademarks of Company X.” Actual notice can be given by directly communicating with the alleged infringer. Keep in mind, without notice, you will not be able to enforce your brand adequately.
👑 Pay fees.
Pay maintenance fees. This is tremendously important. US trademark registrations, like some patents, require the payment of maintenance fees to keep the mark alive and enforceable. A trademark owner will need to pay fees and file USPTO affidavits and declarations the first five years, in another five years, and every ten years thereafter. Nothing is free, right?
Establishing a trademark is usually one of the first intellectual property rights many companies pursue, and obtaining a trademark registration can be especially sweet. But as the saying goes, ‘with great power comes great responsibility.’ Registered trademark rights require an understanding of the nuances of the Principal and Supplemental registers, notice, use, monitoring, and fees. Neglecting any of these actions could put your hard-won mark at risk.
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Angela Grayson, CIPP/US, CLP is an author, speaker, and lawyer. She is the Principal and Founder of Precipice IP, PLLC. Angela is a patent, trademark, copyright, and technology law attorney with almost 20 years of experience helping science and technology companies protect products, brands, designs, and data from idea to launch.
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