Begin with Registration
There are benefits to registering a trademark. Those benefits are largely obtaining a presumption that you own exclusive rights to that mark. In a lawsuit for trademark infringement, the holder of a registered trademark does not need to prove that the registered trademark is valid. The person challenging the validity must prove that the registration is invalid. This is not true if the trademark was never registered. If their trademark is never registered, no presumption is given.
Maintain Registration
Once you register a trademark with the United States Patent and Trademark Office (“USPTO”) you must maintain your trademark and your registration. In order to maintain your trademark and your registration, you must continue to use that mark.
Five years after you register your trademark with the USPTO you must file proof with the USPTO that you have continued to use that mark.
Every ten years after you register your trademark with the USPTO you must file proof with the USPTO that you have continued to use that mark.
Filing Proof of Continued Use
Filing proof of continued use of a trademark with the USPTO is a simple process. The USPTO maintains forms for your use and convenience. These forms may be found on the USPTO website. Simply go to the USPTO website, complete, and file the Section 8 Affidavit of Use to prove continued use of your registered mark. This form will direct you to state the necessary information. Necessary information to prove continued use of your registered mark will include a statement by you that your trademark is used in commerce and other information about goods and services on which you use your registered mark. A sample will be required for every type of good or service upon which you use your registered mark.
Filing an Affidavit of Incontestability
You should also consider an additional avenue of protection for your exclusive right to the use of your mark. Filing an Affidavit of Incontestability provides you with an added level of protection. This gives you incontestable evidence of your exclusive right to the use of your registered mark. This prevents anyone from alleging that he or she has used the same mark before you did. This also prevents anyone from alleging that your registration is not valid because your mark is merely descriptive. Descriptive marks may not be registered. You can see, therefore, the benefits of filing an Affidavit of Incontestability. This may prevent time-consuming and costly litigation in the future.
The USPTO Affidavit of Incontestability is located on the USPTO website. This form is the Section 15 Affidavit of Incontestability. This form is used by trademark holders who have used their marks continuously in commerce, as registered, for five years in a row at any period of time after the mark was registered. After the passing of those five years, the trademark holder has one year to file an Affidavit of Incontestability. A trademark holder who has had his or her exclusive trademark rights contested in any legal proceeding during those five years of continued use may not file such an Affidavit.
