TRADEMARKS FOREVER:
TRADEMARK MAINTENANCE PROGRAMS AND YOUR BUSINESS
I am often asked, 'How long is a trademark good?' The trademark files in our office are open files as long as a trademark lives, and that is as long as the trademark owner continues to use the mark properly. Some of the more famous trademarks in the United States have been used for well over 100 years. But diligence is required to keep trademarks alive and protected. Registration renewals, proper trademark symbol use, and monitoring programs to catch potential infringers must be addressed. Here is an outline for a trademark preventive maintenance program:
- For federal registrations, Section 8 and 15 Affidavits should be filed between the fifth and sixth anniversary date of the registration. This keeps the registration from being canceled and also makes the registration 'incontestable' from attack on a number of grounds.
- Older federal registrations have an initial term of 20 years. A renewal affidavit must be filed within six months of the 20th anniversary date to keep the registration alive. More recent registrations have a 10-year term, which also must be renewed.
- State registrations in Tennessee (and typically in other states following the Model State Trademark Act) have a 10-year term. They must be renewed on a timely basis to extend the life of the trademark for another 10-year term.
- Properly use TM, SM, and registration marks where appropriate. Proper use of intellectual property notice symbols is crucial.
- Consider establishing a trademark monitoring program. In essence, a monitoring program is virtually a continuous electronic trademark search that monitors new federal, state, and/or common law uses of the mark and lets you know if a potential infringer is beginning the trademark process. If you don't protect your mark against subsequent similar marks, your trademark rights become diluted and defenses such as laches, acquiescence, and estoppel can be raised by infringers.
- Modification of the mark may require registrations to be amended to reflect changes. If changes constitute a 'material alteration,' a brand new registration is in order.
- Never let anyone use your trademark without a written trademark license.
These can be simple or complex, depending on the nature of the use by the licensee. All trademark licenses should include a quality-control provision, giving the licenser the right to review the trademark's use and the quality of the products on which it is being used. Also, you must actually exercise the quality-control right to keep from 'tarnishing' your trademark rights.
Just as you keep your car tuned and your computer discs free of dust, you need to pay attention to trademark preventive maintenance. Doing so will enhance the value of your firm's most valuable assets-your trademark and service marks.
Reprinted with permission from The Smith Report: Intellectual Property News, Updates, & Information for the Creative & Hi-Tech Professional, Vol. IV, No. 1, Spring 1993, P.O. Box 663 Gallatin, TN 37066, (615) 391-5282; fax (615) 391-0744.