Patent Attorney and Founder
You may think that registering a trademark grants you perpetual rights to that mark. Unfortunately, that isn’t the case. If your company had to discontinue manufacturing or sale of products or if you’ve otherwise limited your business’s scope, you’ll need to check the status of all your registered trademarks. A trademark can be canceled (or declared “dead”) if it has not been used for three years or if your filings were not maintained. How does this impact you and your business? Canceled trademarks can be purchased and used by other companies.
Defining Trademark Non-Use Cancellation
When you applied for a trademark, you agreed that either the trademark would be used in commerce with the goods or services listed in your registration or the trademark would not be used in commerce due to special circumstances. If you do not abide by those guidelines, or circumstances, like the pandemic, have caused changes to your initial application—your trademark can be canceled or declared dead. And your competitors can swoop in.
There are three ways that your trademark can wind up canceled or abandoned.
- Trademark application did not make it to registration. Your application could be too similar to an existing mark, or you didn’t complete the process. Every application, even if it doesn’t mature to registration, remains in the USPTO database forever.
- The registrant forgot to renew or use the mark. A registered trademark must be renewed by certain dates given to you by the USPTO. New trademarks must be renewed between year five and six. The next round of renewals should happen between years 9 and 10. After that, you should apply for renewal every 10 years. Failing to meet the deadlines will result in a canceled trademark. As we mentioned before, you must also use your trademark–if you fail to use it for three years, you’ll lose your mark.
- A competitor filed a third-party petition. Your competitors are watching you and your trademarks closely. They can file a petition to cancel your trademark if they feel it is too similar to their own mark. If they can show that you have stopped using the mark, they can file a petition to cancel as well.
How to Prevent a Non-Use Cancellation
Effectively monitoring your trademarks is crucial to maintaining your trademark status. You don’t want to experience a court battle over a trademark non-use cancellation if you can avoid it. And you can.
- Use Your Mark: After you’ve registered your mark, you must use it in all the materials and products you named in your application. Otherwise, you’re vulnerable to cancellation.
- Maintain Your Registration: Only you (or someone you hire) can manage your trademarks. The USPTO office doesn’t send reminders for maintenance documents. As stated above, you’ll be required to update documentation between the 5th and 6th years after your mark’s registration date. If you fail to complete the paperwork, your mark could be canceled or lost.
- Monitor Your Marks: Similar to above, it’s important to monitor everything that you have trademarked. Even trademarks that aren’t your ‘crown jewel’ shouldn’t be ignored. If a trademark is compromised, then someone has to give an account as to why it wasn’t being watched. And that defense can be costly.
Maintaining a strong trademark monitoring strategy is key to preventing trademark non-use cancellation. Keep tabs on what trademarks your competitors are registering. After all, they’re doing it to you. Competitors may seek to cancel a registration on the basis of non-use and/or abandonment. In cases like this, you can build a winning defense by keeping good records of continuous use of the mark from the registration date to the present.
Managing your trademark usage is the number one way to prevent trademark non-use cancellation. This doesn’t have to be hard. Contact the team at Bold Patents to provide you with a comprehensive, strategic trademark monitoring process.