The basis of all trademark law is the use of the mark. Using the mark (your business’s name/logo/tagline) in commerce is what creates your trademark rights, not the registration. The registration, though, greatly amplifies those rights.
When registering your trademark with the United States Trademark and Patent Office (“USPTO”), you have to establish prior use of the trademark in interstate commerce (there is also an Intent to Use option if you know you will be using the mark within 36 months.
“Prior use of the trademark” means that, at the time of filing, you must be using your trademark in the ordinary course of your business. How you establish that depends on if you are selling goods or services. For goods, the mark must appear on the goods, the packaging for the goods, a container for the goods, or on displays or banners associated with the goods, and these goods must actually be for sale. For services, the mark must be used or shown in the sale or advertising for the services, and, again, these services must actually be for sale. In addition to above, the mark(s) must be used in interstate commerce (across state lines). Typical evidence is proof of a website showing the goods and services.
Trademark protection, however, does not stop once you have your trademark registered with the USPTO. Once your registration is granted, the mark must be used, as registered for all goods/services listed in the certificate of registration, in the same manner as it was registered, otherwise the protection may be lost.
This means that, if you registered your trademark in class 25 (“clothing items such as t-shirts, shorts, hats and caps”) for both a word mark and a logo mark. Then, after securing registration, you only use word mark on hats and caps but not on any of the other goods listed in the registration and you do not use the logo at all, you are opening the registered trademark to a possible full or partial cancellation attack by others for lack of use as registered.
Recently, the USPTO has implemented several initiatives to strengthen the quality of the Trademark Registry to prevent bad actors from clogging the Registry with unused trademarks. One, of those initiatives, an expedited cancellation process, recently became law. Within Consolidated Appropriations Act of 2021, which contained the most recent COVID-19 relief, was also the Trademark Modernization Act (“TMA”). TMA allows for new grounds of cancellation of a registered mark. For example, through a petition on the merits that the mark has never been used in commerce on or in connection with the goods and services. This proceeding can only be brought three years after the mark is registered, but no later than 10 years after registration.
With these recent changes to trademark law, it is critical for you and your business to have a comprehensive IP protection plan for your trademarks that includes both registration and maintenance. Ser & Associates regularly assists businesses and entrepreneurs register and maintain their trademarks. If you need assistances in protecting your business’s name, logo and brand, please contact us at 305.222.7282 or [email protected].
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