What does an applicant need to do to protect the mark after it is registered?

Once properly registered, trademarks generally need to be renewed by filing a Declaration of Continued Use. The first Declaration of Continued Use is usually due between the 5th and 6th anniversary date of the filing. The next renewal usually falls between the ninth and tenth year. Thereafter renewals are generally every ten years. Trademark Counsels provides notice of the applicable deadlines and allows filing of the necessary paperwork via its personalized portal with just a few clicks of the mouse or with some minor updated information.

At the five year mark, assuming continued use of the mark, we can also help file a Declaration of Incontestability, which provides additional protection under trademark law. This may prevent others from contesting the trademark on several common grounds, such as: (1) the mark is not inherently distinctive; (2) it is confusingly similar to a mark someone else began using first; or (3) the mark is simply functional as opposed to identifying the source of the goods or services.

What do I do if someone is infringing?

Often a trademark owner will send a cease and desist letter demanding that the infringing party stop using the mark. The infringement may not be on purpose and the infringing party may stop when notified that their conduct is in clear violation of another's rights. However, infringing parties usually ignore requests from owners but almost always respond and cease and desist when such a letter is served by an attorney. The attorney will also advise you on whether a trademark infringement lawsuit is warranted or not. You can seek legal advice or answers to your questions from here.

Successful lawsuits have common characteristics and you should discuss with a lawyer whether any of these are present in your situation:

• The plaintiff is the owner of a valid mark - which is ordinarily presumed if they have a federal trademark registration
• The other side is using the mark without authority in connection with the sale of goods or services
• The other side is using the mark in a manner that is likely to cause confusion to reasonable consumers

Is it possible to make changes to the mark after it is filed?

It is possible to amend an application, but the process and the associated fees generally depend on the timing of the changes. Changes before the trademark has been published in the Official Gazette can be made by logging into your Trademark Counsels account and request that a change be made. Additional fees to Trademark Counsels and filing fees to the USPTO may apply.

Changes once the trademark has been published in the Official Gazette generally require a Post-Publication Amendment, which Trademark Counsels can assist with.

Depending on the scope of the amendment, an applicant may need to file a new application instead. For example, amendments that broaden the scope of a description or add international categories may require additional fees and may require a new application. Clerical errors, on the other hand, are generally easy to fix and typically won't affect the applicant's place in line or require a new application.

Is it possible to sell, license, or assign a trademark?

Yes, like any other business asset, a trademark can be sold, licensed or assigned. Validity requirements generally still apply, so someone usually needs to continue to use the mark in commerce and it is helpful to register assignments with the USPTO. If you enter into such an agreement, we can help with a transfer of the trademark with the PTO. Sometimes, individuals register the mark before a company is officially set up. Then, once the company is formed, the mark needs to be transferred into the company.