08 Mar Use It or Lose It: Maintaining Your Trademark
In the world of creative business, there aren’t too many assets that follow the old rule, “Use it or lose it.” Trademark happens to be one that does. Why? Because after all of the time, effort, and money you invested into establishing your brand’s registered trademarks, there is still work to be done. Absolutely, trademarks are still worth the investment (you can read our article here about the importance of registering trademarks). But, a trademark is a living asset, and it needs to be protected, defended, and maintained. In this article, we provide our top three tips on how to keep your trademark alive through continuous, consistent use. Then, tune back in next week for a look at how to defend your mark against infringers.
Know How to Use It
A lot of trademark owners know the general concept behind, “Use it or lose it,” but they have trouble implementing the principal. Why? Because it’s not immediately apparent which ways you must use your trademark to maintain registration, or where, or how often. There are two metrics by which the United States Patent and Trademark Office measures “use”: continued use and consistency.
First, continued use requires that you are using your registered trademark regularly over time. There is no hard and fast rule about how often you actually must use your mark, but a period of continuous nonuse is a good indication that you are not continuing to utilize your registered trademark. If you stop using your mark for a period of time, the registration may be considered “abandoned.”
Consider these two examples:
If you have a registered trademark for the product name on a particular item that you sell, and you temporarily cease to sell that product for a few months while you restock inventory, it is likely that the USPTO will not consider that an abandonment of the mark.
But, if your business owns a registered trademark for a logo that wasn’t landing with customers, so you set it aside for a few years while you go in a different direction, that trademark may lose its registration for failure to use it.
The second metric for measuring trademark use is consistency. This means consistency in the way the trademarked content is being used. Basically, if your business obtains a trademark on a particular logo, slogan, or other symbol, you must continue to use that very mark to maintain its registration. If a logo is reworked after a few years, using the new logo likely will not serve to maintain the registration of the original logo.
Remember Your Renewal Dates
The USPTO does have a special timeline that it follows when checking in on trademark holders to verify continued use. Each time that a trademark holder checks in with the USPTO, it must verify that the mark is still alive and viable. We’ve written about the renewal dates before, but here is the short version:
- First Renewal: due five years from the anniversary of your trademark
- Second Renewal: four years later (nine from the initial trademark registration date)
- All Subsequent Renewals: every ten years after the second renewal
The responsibility is yours (or your attorney’s, if you choose to work with one) to remind you about these dates. If you fail to renew, your mark will be canceled automatically.
Use the Appropriate Symbols
Once you have successfully registered a trademark, you can begin using the ® symbol. This puts the public on notice of your registration and is considered “proper use” by the USPTO. Improper use, or failure to display this mark, doesn’t mean your mark isn’t protected, but it makes the mark more vulnerable to challenge. Where should you be using the ® symbol? Basically, use it anywhere that your registered mark goes, especially when it comes into contact with competitors or consumers. For example, make sure you are using the ® symbol next to your registered marks on
- Product packaging and labeling
- Marketing materials (including online)
- Website and other virtual presences
Preserving your trademark is an ongoing pursuit. However, it is a worthy one. The trademarks you hold make up your brand, which is, at its essence, your business’ reputation. What asset could be more important than the mechanisms by which consumers recognize your brand and choose to remain loyal to you?
Let’s Get into the Specifics
Of course, a blog post like this can provide the big-picture guidelines around maintaining a trademark through continued use, but often real life is more complex. If you are facing a real-life question about how to use your trademark, what to do if you have taken a hiatus from using your mark, or how to revive a mark that has been sitting dormant, click here to schedule a call. We can talk through your specific circumstances and create a plan of action