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Published March 15, 2023

Catherine Cavella, ESQ.

Trademark protection for your brand identity provides you with exclusivity and opportunity. Securing trademark protection is just another step in a longer process, however.


We previously talked about the process of renewing various IP protections, including trademarks. These marks require attention and effort over time to uphold and renew. Trademarks are not a “set it and forget it” effort. Failing to use your mark, prove continued use or excusable nonuse, or even failure to address attempts to infringe upon your trademark can cost you trademark protection.


This is why we recently launched a service specifically catered to trademark policing and enforcement. We frequently hear from clients who need help and guidance when it comes to keeping an eye on others adopting similar trademarks that infringe upon their trademarks. You have a number of legal options available to protect and extend the life of your trademark.


Actively Use Your Trademark
If you want to keep your trademark rights and keep your trademark registration with the US Patent and Trademark Office (USPTO), you must continuously use the trademark as described in your Registration. The continued use of the mark in commerce proves that the trademark still represents the source of the goods and services to the relevant public, your customers, and potential customers. Trademarks that are no longer used in commerce cease to be trademarks and fall back into the public domain, where they are free to be picked up and used by anyone.


Proving Intent to Use
In some cases you can file to register a trademark even if you are not yet using the mark in commerce. In such cases, you would file on an intent-to-use basis. Proving intent to use may be as simple as the sworn statement you provide to the USPTO in your application, but in order to eventually get you trademark registered you must actually use it in commerce within 3 years of allowance. If you are not yet using it, your application will expire and you will need to file again.


It is important to understand that while the USPTO will not often question your intent-to-use statement, others who file a claim against your mark can and will do this. They have the right to question your good-faith statement, which could put your mark at risk.


Excusable Nonuse
For registered trademarks, continued and continuous use in commerce is required for renewal. However, the USPTO will permit renewal of a trademark not actively being used if the owner can prove “excusable nonuse.” The owner of the mark needs to provide information about why the mark is not in use, when the mark is expected to resume use, and what efforts are being made to continue the use of the mark. This can be done through a Section 8 Declaration and an affidavit of Excusable Nonuse.


Cease and Desist
Preventing the use of your mark by other individuals or organizations is a must. This can often be done through a Cease and Desist Letter written by you or your attorney. Despite many misconceptions, these letters are not legally binding orders. However, they are a warning that legal action will be taken if the illegal use of the mark continues. Even if your trademark is unregistered, failure to send Cease & Desist letters to users of the same or similar trademarks can (will) undermine your trademark rights.


Think of it this way: If Penelope has permitted 20 previous users of the mark PEARL for similar goods and services and then she goes after Dolan for using the mark PEARL for similar goods and services, Dolan can make the argument that Penelope has lost her trademark rights because she has permitted 20 other PEARLs out there. The whole point of trademarks is to communicate to customers a single source of the branded goods or services – so when we see the Apple logo we know the phone is an iPhone and came from Apple in Cupertino, CA. If the mark can no longer perform that function, then it is no longer a trademark. It is the responsibility of the trademark owner to take reasonable steps to stop infringers.


At IP Works Law, we will help you draft a cease and desist letter and take care of the other steps necessary to establish and uphold a trademark, registered or unregistered. We even have a subscription service to keep the cost predictable and manageable. Contact our team and Power Your Ideas®.


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Since 1992, Catherine Cavella, Esq. Her focus on Trademark Law and Copyright Law for the last few decades gives her deep insights into the fundamental principles behind the rules. Catherine regularly writes about new developments in trademark law, copyright law, and internet law.