Trademarks: Maintenance, Licensing, and Assignment

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You have selected a trademark and successfully registered it with the USPTO. Congratulations, this is the beginning of a potentially lucrative opportunity. But using your trademark profitably and without opposition requires that you maintain your rights and seek opportunities to exploit your mark. 

Trademark Maintenance

You will lose your registration if you fail to file with the USPTO some additional paperwork known as the Section 8 and Section 15 Declarations. These declarations must be filed between the fifth and sixth year after your original registration date (unless you purchase a six-month grace period). The USPTO will not notify you of this deadline so you should mark it on your digital calendar. You will also have to renew your registration prior to ten years after your registration date and submit both a renewal form and a Section 8 Declaration that again proves that your mark is still in use. Below is additional information on these declarations.

  • Section 8: Continued Use. Sometime during the sixth year after registration, the trademark owner must file a Section 8 declaration declaring the continued use of the mark or an explanation as to the special circumstances for any period of non‑use. In the event that the mark has been assigned to a new owner after registration, the change in ownership should be reflected in the Patent and Trademark Office and the Section 8 declaration must be executed by the current owner of the mark. The requirements are set forth in Section 8 of the Lanham Act (15 U.S.C. § 1058) and the procedure, including payment of fees can be accomplished online. If the owner fails to timely file the declaration, federal trademark rights will be canceled and a subsequent user could claim rights to the mark. By the way. it is not sufficient to simply state that the mark is "in use." The declarant must state that the mark is "in use in commerce" and specify the type of commerce.
  • Section 15: Incontestability. One advantage of federal trademark registration is that after five years of consecutive use from the date of registration (or amendment of the registration), the mark may be declared incontestable. A mark that is incontestable is immune from challenge except if it has become the generic term for the goods, abandoned for nonuse or obtained under fraudulent conditions. In order to acquire incontestability an declaration must be filed containing the requirements as provided in Section 15 of the Lanham Act (15 U.S.C. § 1065). The declaration must state that the mark: has not become the common descriptive term of the goods (i.e., the generic term); has not been the subject of a final decision adverse to the registrant's claim of ownership; and there is no proceeding involving such trademark rights pending in the Patent and Trademark Office or in a court that has not been finally disposed. A Section 15 declaration is not necessary for maintaining ownership or rights under trademark law. The failure to file the declaration does not result in the loss of any rights. The filing of the Section 15 declaration can be acocmplished online at the USPTO website.
  • Section 9: Renewal. If the registrant wishes to renew a registration for an additional ten year period, a Section 9 declaration must be filed. A Section 9 declaration is a renewal of the registration and the requirements are set forth in Section 9 of the Lanham Act (15 U.S.C. § 1059). The declaration sets forth facts regarding the use of the mark in connection with the goods or services in each class for which renewal is sought and the filing can be accomplished online at the USPTO website.

Policing the Mark

Trademark owners should perform two types of surveillance. First they should screen competing marks likely to cause confusion. Sometimes the owner encounters potential or actual infringers in the marketplace. Sometimes similar marks are reported by the public. The owner may also uncover potentially infringing marks by reviewing the marks published online for registration.

The second type of surveillance involves use within the trademark owner's business and among licensees. The ownershould provide standards of review for advertising, packaging and promotion involving the trademark. Many well-known brands prepare trademark guides that advise employees on how to create and use trademarks and what to do if an employee notices an improper imitation.

Licensees of the trademark also must be monitored to guarantee that the goods or services offered meet the standard of quality associated with the trademark. Some trademark owners require samples of licensed merchandise to be furnished periodically for examination. Other companies send investigators to review products in the field. For example, the Coca‑Cola company has investigators that visit eating establishments. The investigators order Coca‑Cola or Coke and then send the drink to Atlanta for analysis. This is done to guarantee that the establishment is using Coca‑Cola syrup when producing fountain drinks. It is part of the company's ongoing effort to document the quality associated with the mark. If the quality of the goods does not match company standards then the mark loses some of its good will.

Trademark Licensing

Licensing is the process of granting temporary rights to another party to exploit your trademark. For more information, review this article on trademark licensing.

Trademark Assignment

Trademark assignment is the transfer of ownership and property rights that accompany a trademark.  If you are the purchaser, you will want proof that the mark has the value (or good will) you associate with it.  You will also want to know that it has been properly registered and not subject to opposition. For more on trademark assignments, check this article.

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