If you applied for registration of your trademark or service mark on an Intent-To-Use basis, you will eventually have to file a Statement of Use to show that you are using it in commerce. Ordinarily, you have to file that Statement of Use within six months of receiving the Notice of Allowance from the U.S Patent & Trademark Office (USPTO), but you have the opportunity, if you qualify, to apply for multiple extensions to allow you time to develop your business and eventually file your Statement of Use when you have first used the trademark or service mark in commerce. If you have an intellectual property lawyer working on this for you, hopefully he or she has put the extension deadlines into his or her calendar. But if you’re doing this yourself, you must take the time to calendar the extension deadlines. Six months goes by pretty quickly, and you may not have yet used your mark in commerce by then.
If you already have a registration for a trademark or service mark and think you never have to do anything else again, it’s time to look up your registrations and check your calendar, as you may be due for a renewal. Between your fifth and sixth year following registration, for example, you must file a form with the USPTO stating that you are still using your mark. There are other follow-on filings required, so if you used an intellectual property lawyer and do not have that attorney monitoring your portfolio, you better monitor it yourself so you don’t miss important deadlines.
If you want to expand into other goods and services classifications, this may be an ideal time to do so. Review your portfolio and see if your business has expanded into other categories. For example, if your business is in the apparel industry and you were previously only producing men’s suits but are now making belts, wallets and other accessories, you may want to file in another category for the same mark.
If you decided not to previously register your mark because you were told by your attorney that it was “descriptive” and would be denied registration, and if five years of use in commerce can now be shown, this may be the time to file for registration based on the mark acquiring “secondary meaning” – that is, that consumers have come to identify your mark as indicating a single source for the goods or services.
If you’ve never filed a mark because there was another company using the mark with a federal registration to boot, you may be in luck. Check to see whether the competitor has been as diligent as you have been in maintaining its portfolio of marks. Sometimes competitors let marks lapse because they aren’t monitoring them, and sometimes they let them lapse because they are no longer using the particular mark in commerce. If the mark is no longer being used, it could open the door for you not only to use it, but also to obtain a registration for it, where the registration has lapsed.
Trademarks and service marks are valuable assets. You wouldn’t let your physical inventory deteriorate on a shelf, and you’d replace and expand your physical inventory as needed to stay competitive. Treat your intellectual property the same way; renew, extend and expand to create company value. Indeed, if you are seeking financing or eventually plan to sell your business, your intellectual property portfolio (and your diligent maintenance of it) could play a key factor in whether you close the transaction. When all is said and done, you want to be able to get an “A” for the hard work you’ve done to preserve and defend your marks.