Nutter's IP Bulletin How-To Series on Branding: What to Do Once Your Trademark Registers – The Basics
Posted in Branding, Trademarks

Following the conclusion of trademark prosecution, your certificate of registration has arrived in the mail. Now what? Some lawyers still advise their clients to keep the certificate “in a safe place,” but one wonders how much longer paper certificates will even be prepared and issued. Maybe they will last as long as (paper) newspapers. After all, the information contained on the paper certificate is readily available online at the web site of the U.S. Patent and Trademark Office (USPTO), and either a link to the USPTO web site or a printout of the online record will serve the same evidentiary purpose as the paper certificate.

The USPTO has foreshadowed the demise of the paper certificate by the steady stripping-down of it: a certificate of registration used to look like your high-school diploma, something suitable for framing; now it looks like the insert a theater-goer gets in her playbill program to advise of the substitution of the understudy for the star she came to see. Be that as it may, the fact of registration, no matter the form of the paper or digital embodiment of that fact, is a major event in the journey of your mark from mere mark to brand. And remember, a brand is nothing more than a mark (trademark or service mark) that has done well in life. Like life, success comes with a little luck, but requires plenty of planning. Thus, obtaining the registration is really just the beginning of your path to building a successful national or global brand.

With this article, we’ll start with the basics—what you need to do to keep and maintain the trademark you obtained so the mark can be used for your lifetime, and the lifetimes of your beneficiaries. We’ll then use future articles of our series to discuss concerted efforts you should make to protect the brand you have built with your trademark(s), and concerted efforts you should make to expand and strengthen the reach of your brand.

Your days corresponding with the USPTO are not over after you receive your certificate of registration. Your mark and its registration, unlike a copyright or a patent, are eternal, provided that you make the necessary “maintenance” filings with the USPTO. You will need to file a “declaration of continuing use,” also known as a Section 8 declaration, between the fifth and sixth anniversaries of the registration date. This is usually combined with a “declaration of incontestability,” also known as a Section 15 declaration, which, as the name implies, makes your registration (and the rights it evidences) virtually unassailable (or incontestable). If you miss the deadline for the “continuing use” filing, then, after a six-month grace period, your registration is canceled, and all its benefits lost. So, put (or have your lawyer put) the deadlines for these filings into a suspense file where they will come to your attention in a timely fashion.

The Section 8 and 15 declarations require you pay a fee (currently $100 for a Section 8 declaration and $200 for a Section 15 declaration), and require you to confirm the mark is actually being used. For the Section 8 declaration, you must assert that the mark is in use in commerce with respect to the goods/services for which the mark is registered, or if not in use, provide a reason why such non-use is excusable. For the Section 15 declaration, you must confirm that the mark has been in continuous use in commerce for at least five consecutive years subsequent to the date of registration with respect to the goods/services for which the mark is registered.

The tenth anniversary from the date your mark registers marks the second “maintenance” deadline. At the tenth anniversary, and every ten year anniversary thereafter, you must renew your registration to maintain the registration’s eternal benefits. This is achieved by filing a Section 8 declaration (meeting the requirements as discussed above) and a Section 9 declaration, also known as an application for renewal. As with the Section 8 and 15 declarations, you are required to pay a fee (currently $100 for the Section 8 declaration and $400 for the Section 9 declaration), and confirm that the mark remains in use (or has an excusable reason for non-use). As a trademark owner, you cannot continue to maintain rights in a trademark that you are no longer using.

Further, as discussed in the fifth article in this series, the USPTO also expects you to update your trademark registrations at the time of any “maintenance” filing to reflect any changes in use. Thus, if you are a trademark owner that registered a mark for “pagers; cellular phones,” and you no longer sell pagers but continue to sell cellular phones, you should delete the “pager” portion of the description of goods and services when making your next “maintenance” filing. However, if you are still servicing pagers even though you are not selling them new, and as part of that service you distribute pagers or their parts, the deletion of “pagers” from the description of goods and services would be premature.

If you originally registered your mark on the Supplemental Register, you will want to proactively seek to have the mark moved from the Supplemental Register to the Principal Register after five years have passed. As also discussed in the fourth article in this series, under U.S. law, five years of substantially exclusive use of a mark creates secondary meaning for the mark, and thus turns a “merely descriptive mark” into a “distinctive mark” that is eligible to be recorded with the Principal Register. Notably, as your mark moves from the Supplemental Register to the Principal Register, the mark is not published for opposition, and thus a mark moving from the Supplemental to the Principal Register can remain relatively unnoticed during the transition.

If you filed only an intent-to-use trademark application, you will not have received a certificate of registration, but instead you will have received a notice of allowance indicating that a certificate of registration will issue once you as the applicant demonstrate that the mark is being used in interstate commerce. Applicants receiving a notice of allowance for their yet-to-be-used mark must check-in even more frequently with the USPTO than their counterpart trademark registrants. More particularly, once the USPTO indicates that your intent-to-use trademark application is allowable, you have a three year period during which your mark must be used in interstate commerce in conjunction with the goods and services included as part of the application in order to perfect your interest in the mark. Every six months the USPTO requires that you pay a fee (currently $150) and confirm that you still have a bona fide intent to use the mark in interstate commerce. If those three years pass and you still have not used the trademark in interstate commerce, the mark cannot be registered, goes abandoned, and you no longer receive the priority date you would have received based on your originally filed intent-to-use trademark application.

Receiving the certificate of registration also allows you to start using the ® designation in conjunction with your trademark. For those not in the know, the TM designation is for trademarks that are not registered, while the ® designation is used for a registered trademark. Notably, the ® designation should only be used in conjunction with the goods or services with which it is registered. For other goods where the mark is not registered, the TM designation should continue to be used. For example, if you register a trademark for a beverage, but then also use the trademark on t-shirts you sell even though your registered trademark is not registered in the class of goods that includes t-shirts, you should use the ® designation on the beverage and the TM designation on the t-shirts. In instances in which the mark appears multiple times on the same object, there is no requirement to use either the ® or TM designation for every instance. Use with every instance is allowed though. Generally, it is recommended that you use the appropriate trademark designation on the first, most prominent display of the trademark on any item or page.

There is no requirement that a trademark owner must use the ® designation once a mark registers, but you certainly should use it. The ® designation is like the lock on the front door of your house; it keeps otherwise honest people, who absent the ® designation or the locked door, might be tempted to get into mischief, at a safe distance. Indeed the chief protection afforded to you as a trademark owner by your registration and the ® designation is invisible and comprises all the unknown people who are deterred by the ® designation from adopting and using a mark similar or identical to yours; either the unknown people have a general sense, or their lawyers tell them, that the ® designation means trouble, and they act accordingly. Even where you are dealing with a determined counterfeiter who knows exactly what the ® designation means but is unfazed by it, the symbol serves the useful purpose of making it easier for you to recover money damages.

Over the course of our next articles in the series, we will discuss the offensive measures you should take to better establish your brand, as well as the defensive measures you should take to prevent consumers from becoming confused by other similar marks and to prevent the mark from becoming generic because you were perhaps a little too successful in building your brand.

This update was prepared by the Intellectual Property Department at Nutter McClennen & Fish LLP. For more information, please contact your Nutter attorney at 617.439.2000.

This update is for information purposes only and should not be construed as legal advice on any specific facts or circumstances. Under the rules of the Supreme Judicial Court of Massachusetts, this material may be considered as advertising.

Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.

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