Take These Steps to Avoid a Trademark Cancellation

When you establish a trademark for your intellectual property, not only are you protecting your hard work but you’re increasing the value of your business. Businesses with extensive intellectual property portfolios have more power in the market. You’re in control of important and defining business properties.

The process of establishing a trademark can be a bit tedious, and it’s important to remember a successful trademark application isn’t the end of your trademark fight. Trademarks are living and active aspects of a business, and you could lose your trademark just as fast as you filed it if you’re not careful.

We want to help you and your business secure your intellectual property by avoiding trademark cancellation proceedings. There are a few important steps to remember once your application has been approved.

Use it or lose it

Trademarks require active use of the mark in question once you secure federal trademark registration. This means you must actively use the trademark as intended in your application. You won’t be able to stop production of the trademark just because customers aren’t buying your work.

A consistent and diligent approach to applying your mark as laid out in your approved trademark application is important for your business. This can include displaying the mark on company websites, in storefronts, and in other company-related locations. You should use the “®” symbol instead of the ™ symbol, as well, as the “®” indicates a successful federal trademark registration.

Apply for “Excusable Nonuse”

If you aren’t able to keep up active use of the trademark, your only option to maintain your registration is to apply for “Excusable Nonuse.” This is a rare exception to the active use requirements by the US Patent and Trademark Office.

If you have a fair reason to temporarily cease the use of your trademark you can still protect the mark with approval from the USPTO. If you’re having issues with the supply chain or simply waiting for additional supply you may be able to cease use for certain periods of time.

What’s important to note is you will lose your trademark if you cease use without a clear plan to resume use at a reasonable point in time. This means you can’t just state in your Excusable Nonuse application that you are stopping for an indefinite period. You will need to clarify the circumstances required to resume use.

Follow application deadlines

Trademark renewal applications have specific deadlines defined by federal law. The rules are relatively simple and just require you to file and prove either active use or Excusable Nonuse for your mark.

The deadlines are as follows:

  • Between the 5th and 6th year after registration
  • Between the 9th and 10th year after registration
  • Every 10 years thereafter

Defend your trademark

These are all pretty common ways to maintain your trademark, but one that many intellectual property clients forget is that you actually have to defend your trademark from infringement. This means you will need to call out anybody who attempts to copy your trademark for their own benefit.

It’s frustrating to put hard work into something just to have someone else turn around and copy and profit from it. In these cases, you or an associate will need to inform the USPTO of the violation and have a cease and desist filed on the illegal use of your trademark.

If you fail to defend your trademark from infringement, USPTO officials may determine that your mark has become diluted and is no longer worthy of trademark protection. This can be a big blow to your business and your reputation.

The right attorney can prepare you for and help you work through the life of your trademark. At Waserstein & Nunez, we know state and federal laws. We won’t walk away the moment you secure a successful federal trademark registration. We help clients with renewal applications and can help you defend your trademark from infringement. Contact our team today to get your intellectual property secured and protected.

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Waserstein & Nunez, PLLC

Waserstein & Nunez, PLLC is a boutique law firm with extensive and varied experience of a large law firm. They are geared towards deal-making and solutions but always preparing and ready for trial or Plan B.

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