Over the past two weeks, we have highlighted six tips based on questions we are most frequently asked. This week we wrap up our three-part series and discuss issues like how to properly use and enforce trademark rights. If we didn’t answer your most frequently asked question, please visit our FAQs on our website or contact us for more information.
Week 3: Top 10 Trademark Questions Answered
7. What do I do if I get a cease and desist letter?
First of all, do not ignore the letter and do not attempt to answer it on your own. Second, always seek counsel from a qualified, competent trademark attorney. Such letters often involve serious legal rights. As a result, it is ill advised for business owners to respond on their own since they could be giving up legal rights or giving up more than necessary in a settlement. Ignoring the letter and hoping it will go away is not the answer either. If the company sending the letter took the time to send it, they expect a response and if they do not receive one, they may initiate legal proceedings. Taking the time to have trademark counsel exchange a letter and/or a phone call with them is less expensive than getting embroiled in a court battle.
8. How long does it take to get a trademark registration?
The time can vary depending on many factors, but generally speaking, if you do not encounter issues, the fastest you can secure a trademark registration is generally 9-14 months. If you apply on an intent-to-use basis or receive one or more Office Actions, this process can drag out to 2-3 years at least. And if your application is opposed by a third party after publication, some applications can drag on for 3 or more years. But, generally speaking if you have everything in order and are well represented, most registrations issue in about one year.
9. What happens after I get my trademark registration?
You must continue to use you trademark registration with the registered goods and/or services in order to keep your registration active. For the first three years after registration, your mark is vulnerable to cancellation for non-use. Between the fifth and sixth years after registration, you must prove you are using the mark by filing documents proving such with the USPTO, and between the ninth and tenth years and every ten years thereafter, you must renew your trademark with the USPTO.
10. How do I properly use my trademarks?
A trademark is an adjective and must always be used as such. It should always be followed by the class of goods or services (noun) it modifies. For instance, APPLE® computers or BLOOMBERG® business information services. Never use a trademark as a verb or in the possessive tense, for instance, never say I LYSOL’ed the bathroom or VIRGIN’s airline – this is a sure-fire way to lose your exclusive trademark rights. When the mark is pending and awaiting registration, the proper symbol of use is the ™ symbol. You may only use the registration symbol ® for marks that have an issued certificate of registration with the USPTO. If your company name and your trademark are similar, please be sure to understand the difference between your company name and your trademark. Please see our blog post on that topic or contact us for more information.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a focus on trademarks and copyrights, as well as advertising issues related to promoting clients’ brands. Stacey has been recognized by her peers as a Super Lawyer® for her outstanding knowledge and services in intellectual property law. She can be reached at email@example.com.
Stacey is also the founder and lead instructor of Trademarkabilities™, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be efficient and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.