Maintaining Your Trademark

Originally posted 2018-11-19 11:19:08

By Tikwiza Nkowane|

A federally protected trademark can be retained indefinitely if maintained in accordance with the laws.  After going through the effort of obtaining federal protection of a Trademark, why would you want to forgo those rights by not maintaining it?  Failing to comply with the required maintenance documents can lead to cancellation of the mark being protected under federal law, thus losing the protected rights afforded under statute provided at the federal level.

As the registration is canceled the only option is to file a brand-new application and begin the entire registration process again from the beginning.  Submitting a new application does not guarantee that the mark will be reregistered, and protection granted.

An owner of a trademark should, therefore, maintain their registered trademark after the grant of registration, in order to be afforded the rights and protection that the statute provides at the federal level.

What are the requirements to maintain a trademark?

Trademark rights can last forever, but in order to maintain a trademark and keep it “live”, the law requires maintenance of a federally protected trademark.

Maintenance of a federally protected trademark requires submitting relevant documents at relevant periods, and a document of confirmation of actual lawful use of the trademark in commerce.  This is a very important factor in maintaining a trademark.

To maintain a trademark, the owner of the mark is required to continue using the mark in commerce, and file maintenance documents between:

  • The fifth (5th) and sixth (6th) years after registration, known as the first maintenance filing;
  • The ninth (9th) and tenth (10th) years after registration, known as the second maintenance filings; and
  • Every ten (10) years after registration, known as subsequent maintenance filings.

In addition, the filing of a “Declaration of Use”, which attests to the continued use or excusable nonuse of the mark or on or in connection with the good and/or services in the registration is required.

The filing of a “Declaration of Use” is extremely important and must be filed between:

  • The fifth and sixth year following registration,
  • The ninth and tenth year after registration; and
  • Every 10 years thereafter.

There have been cases that have resulted in trademarks being completely canceled following fraud in the declaration of use.

The case of Medinol Ltd. V. Neuro Vasx Inc., 67 U.S.P.Q.2d 1205 (TTAB 2003), involved a trademark registration covering two types of medical devices in one class of goods.  Neuro Vasx Inc. was issued a registration for the mark NEUROVASX, and after 2 years, Medinol Ltd initiated cancellation proceedings claiming that Nero Vasx failed to use its registered mark on one of the two goods covered under the registration.  In Nero Vasx’s response to this action, they sought to delete one of the goods in question from its registration and dismiss the cancellation as moot.  Medinol objected to this and argued fraud in that Neuro Vasx procured a registration that taints its entire registration.  The court held that Neuro Vasx untimely deleted the goods on which the mark had not been used.  The entire registration could, therefore, be held invalid, and the Federal Circuit found that “a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.”

This shows the importance of being able to demonstrate continuous use of the mark registered in commerce.  If you obtained federal protection of your trademark, why lose it because you have failed to maintain it or use it in commerce?

In another case, In re Bose Corp., Fed. Cir., No. 2008-148, Bose, the famous audio equipment company, filed a Section 8 affidavit in their 2001 renewal.  They stated that the WAVE mark remained in use in commerce on various goods, including audio tape recorders and players.  However, Bose had, in fact, stopped manufacturing and selling audio tape recorders and players sometime between 1996 and 1997.  It was Bose’s general counsel who signed the renewal and testified that they believed the WAVE mark was still used in commerce in the form of Bose continued to repair items and ship them in interstate commerce.  It was held that the use as testified by the general counsel was not in use in commerce and that the general counsel’s belief, on the contrary, was not reasonable.  The registration was therefore canceled on the basis of fraud.

What examples are there of good maintenance?

Actively maintaining a trademark is key to success. Marvel and DC Comics are an excellent example of this.

Marvel and DC Comics jointly registered the trademark ‘superheroes” in 1980.  They actively maintain the trademark by initiating legal proceedings against others who try to use the word ‘superhero’ in their title or on related products.  In addition, they continue to produce shows, other materials, and comics which use the term on a very regular basis.

Imagine the very unlikely scenario that Marvel and DC, accidentally miss the deadlines to file the necessary documents to maintain their trademark.  Their federally protected mark will be canceled and or deemed abandoned.  Just because they are both very well-known brand, as seen above with Bose, they must also comply with the law in maintaining their trademark.  Any individual can now apply to be the owner of the mark “superheroes”.  Of course, as Marvel and DC have held the mark for a number of decades, the likelihood of getting it back after applying for re-registering may be much easier for them due to their active process in maintaining the trademark through lawsuits and constant commercial use of the mark since 1980.

Why put yourself through the process of reapplying for a mark that you originally received and got granted? Maintaining a trademark is part of protecting your brand.  Consider the benefits it gives you and ensures that you are compliant with the relevant time limits to submit documents.  There is nothing worse when you lose the protection you worked so hard for, to see it being canceled and possibly end up with someone else owning the mark. Protect and maintain your brand now!

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