Last updated on May 20th, 2019
Registering your mark with the USPTO is only half the battle. Using your mark effectively in marketing materials is where you really win.
It’s important to not only seek trademark protection, but keep it also. You want your mark to get stronger over time. You don’t want it to plateau or get weaker. Worst of all, you don’t want to lose trademark protection in your brand.
Your intellectual property is valuable. There are strategies you should consider now to ensure that as the years go by, you continue to enjoy the value of a strong brand and registered trademark.
Renewing Your Mark
First, don’t forget to renew your mark. You must renew your mark several times over its lifetime:
- First between the 5th and 6th anniversary of your mark’s registration.
- Then between the 9th and 10th anniversary.
- Finally, you must continue renewing your mark every 10 years after the 10th anniversary.
After your mark has been on the Principal Register for five years you can also file a Section 15 declaration of incontestability. Incontestability is a legal term of art in trademark law that we could talk about for hours, but the short story is that you want your mark to be incontestable. Filing for incontestability is an important step that you don’t want to forget because it will grant your mark additional protection in the event of a dispute.
Policing Your Mark
It’s just not cool to infringe on another business’s mark. It’s even less cool when someone infringes on your mark.
You need to stay aware of other competitors in your industry and think about the names of new businesses that you become aware of. If someone uses your mark or a confusingly similar mark to promote their own brand then that damages your trademark. It makes your brand weaker. It’s even worse when your competitor is selling lower-quality versions of the same products. You probably already know why this isn’t good for businesses, but it’s also not good from a legal standpoint.
If you know about it and don’t do anything, it puts you in a significantly weaker position later on when renewing or protecting your trademark rights.
Cease and Desist Letter
A good first step you might consider is issuing a cease and desist letter. A strongly worded letter informing the trademark infringer of your registration, your date of first use of the mark, and your rights under trademark law may do the trick.
Before you send out any letters though, you should find out more about the competing business, especially if it’s possible that they were using the mark first. In that case you are the infringer, and sending them a letter will only make your competitor aware that you exist.
It’s recommended to get a trademark attorney to write the cease and desist letter for you. They can also do the investigative work for you to make sure that you are legally in the clear before sending out any messages. An attorney will also have more experience with the legal bases for any rights you attempt to assert.
Trademark Opposition Proceedings
You might also become aware of infringement or potential infringement through other means. For example, it’s typical for trademark owners to monitor new trademark applications with the USPTO. There are a number of services available online to help you monitor potential infringers of your trademark.
If you discover that someone has filed a trademark application for a confusingly similar mark, you can start Trademark Opposition Proceedings. This will give you an opportunity to explain to the USPTO and the potential competitor why the mark conflicts significantly with your mark, and why it shouldn’t be allowed to register. If you win, the competitor trademark application can be cancelled.
These are just a couple of examples of ways you can police your mark. There are a variety of business factors that could impact how you proceed when you discover infringing activity. When it comes to policing your mark, it’s advisable to speak to an attorney to find out the best solution for your specific case.
Finally, one additional item to keep any eye out for is genericide. This isn’t likely to be a problem for most small businesses, but in today’s meme-filled viral world, the likelihood of genericide occurring accidentally through a clever marketing campaign is actually increased.
As far as tips to avoid genericide, you can start by never using your mark as a verb. While this isn’t the only thing you can do—and verb use of a mark doesn’t necessarily equal genericide—it is a good cautionary step. If you find your consumers or competitors are using your mark to describe a product or service in your industry, you’ll want to remind them that your mark is your brand, not a verb they can use.
Google and Xerox are popular examples of brands that are fighting genericide. In many circles “googling” is synonymous with searching the web, and “xerox” is synonymous with a copy.
Genericide is a double-edged sword—it’s one of the better trademark problems to have. It means your product or service is so popular that everyone uses it. You just have to make sure they use your name the right way too.
Whatever steps you decide to take to maintain the legal strength of your mark, be proactive. Have a marketing strategy in mind and stick with it. Part of that marketing strategy should include maintaining your company’s image and brand name.
If a marketing decision makes good businesses sense, it’s likely that that decision also makes good legal sense. If you don’t currently have a strategy to strengthen and maintain your mark over the long haul, speak to an attorney today.