How to Protect Your Trademark


By Kristen A. Campbell

As a business, your intellectual property is one of your most important assets and you should protect it.  As soon as you begin using your business name and logo, you're building common law trademark protection for them. This can help you if someone infringes your trademarks locally, but may not be of much use if you expand your business or if someone from out of state starts using your trademark on the internet. To give your trademarks stronger nationwide protection, you must register them with the U.S. Patent and Trademark Office (USPTO).  The following are five steps to protect your trademark and to ensure you don’t lose it. 

1.      Chose a Unique Mark

The USPTO won't register your trademark if there is a “likelihood of confusion" with another registered trademark. A “likelihood of confusion" arises when two marks are similar and they are used for similar goods or services. To minimize the chance that your application will be rejected for this reason, you must conduct a comprehensive trademark search using the USPTO's Trademark Electronic Search System (or TESS) before applying for federal trademark protection. 

2.      Register Everything Associated with Your Mark

If your trademark search doesn't reveal any conflicts with pending or registered trademarks, the next step is to file a trademark application through the USPTO's Trademark Electronic Application Service (TEAS).  It’s important to register everything associated with the trademark. This includes your company’s name, logo, slogans, and product names. By owning these marks, you’re stopping someone else from using them.

3.      Properly Using Your Registered Trademark

Continued, consistent use of a trademark is the single most important thing that trademark owners must do to maintain their trademark (and their federal trademark registration). If you stop using your trademark and do not have a clear path towards resuming use of the trademark, then that trademark is abandoned and the registration is subject to cancellation.

4.      Monitor Your Trademark

Once your trademark registration is approved, you can start using the registered trademark symbol, ®, But your efforts to protect your trademark shouldn't end there. The USPTO registers trademarks, but it does not enforce them—that's up to you.

One way to protect your trademark is to monitor USPTO filings and oppose any applications to register trademarks that seem similar to yours. Another is to be proactive if you determine another company that is using a name or logo that's similar to your registered trademark. In the proper circumtsance, a simple “cease and desist" letter will stop an infringer, but, if that does not work, your federal trademark registration gives you the right to file a lawsuit in federal court.

5.       Maintain Your Registration

When it comes to registering with the USPTO, you need to stay up to date with your mark’s status. The USPTO will not send reminders for maintenance documents.  Trademark registrations last for 10 years and are renewable for additional 10-year periods, but you must file maintenance documents between the fifth and sixth year after registration, between the ninth and tenth year after registration, and every 10 years after that. If you miss a deadline, your trademark registration will be cancelled.