Back to Basics: Trademarks Part 5

What do I need to do to protect my mark after it is registered?

Unlike copyrights and patents, trademarks can last forever if you take the right steps. Once properly registered, you will have to file your first Declaration of Continued Use between the 5th and 6^th anniversary date of your filing. Your next renewal will fall between the ninth and tenth year. After that, you have to renew the mark every ten years.

At the five year mark, assuming you have continued to use the mark, you will want to file a “Declaration of Incontestability” giving you the greatest protection under trademark law. This will prevent others from contesting your trademark on grounds often subject to attack such as: (1) the mark is not inherently distinctive; (2) it is confusingly similar to a mark someone else began using before you; or (3) the mark is simply functional as opposed to identifying the source of the goods or services.

What do I do if someone is infringing?

Often a trademark owner will send out a cease and desist letter demanding that the infringing party stop using the mark. Many times, the infringement is not done on purpose and the infringing party will stop when notified that their conduct is in clear violation of another’s rights.

Sometimes, the infringing party will ignore the demand or take the position that they are not infringing. At that point, you may have to consider a trademark infringement lawsuit. To prevail, you would have to prove:

1. You are the owner of a valid mark – which is presumed if you have a federal trademark registration; and
2. The other side is using the mark without authority in connection with the sale of goods or services in a manner that is likely to cause confusion to reasonable consumers.

If you can prove those elements, you may be entitled to an injunction, or court order that requires the defendant to stop using the mark, an order requiring the destruction or forfeiture of infringing articles; your damages or the infringer’s profits, and, sometimes, recovery of your attorneys’ fees.

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