Failing to properly maintain a trademark registration can lead to a finding of abandonment and a loss of registered trademark rights.
Trademark Maintenance
Getting a trademark registered is not the end of the story. Trademark owners must take affirmative steps to maintain and enforce their marks, lest they lose the rights they worked so hard to acquire in the first place.
Between the 5th and 6th years following registration, trademark owners must file a Declaration of Use and/or Excusable Nonuse under Section 8 of the Trademark Act. Another declaration under Sections 8 and 9 must be filed between the 9th and 10th years, and every 9th and 10th year period thereafter. In addition, filing a Declaration of Incontestability under Section 15 of the Trademark Act allows trademark owners to claim enhanced rights.
Finally, trademark owners have a duty to police their mark. This involves taking active steps to ensure other parties are not using the mark or a confusingly similar mark to describe other goods or services. Failure to police one's trademark can lead to the loss of revenue by infringement or dilution, or the loss of one's trademark rights due to a mark becoming genericized. Our trademark attorneys can help develop a trademark enforcement and monitoring policy that effectively polices the relevant marketplace and protects our clients' trademark rights.
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Attorney consultation requests can be submitted by filling this form. One of our trademark attorneys will respond to inquiries directly. You may also call us at (212) 967-1350.
“ The trademark attorneys at Lewis & Lin are responsive, easy to work with, and fair! ”
— Harvey Moscot (CEO), Moscot NYC
