Besides marking your trademark and using it correctly, you need to protect your coverage by continually making sure that others don't use similar marks to yours and by keeping your registration current with the USPTO. These obligations are called policing and maintaining your trademark. Policing and maintaining your mark are both important because, to keep rights, you need to show that you are the only party that is permitted to use your mark for your purpose and that you deserve your rights because you're continuing to use the mark. Let's talk about policing first. So, you might think that it's the USPTO's obligation to ensure that there are no other uses of competing marks out there, and this is true to an extent. The USPTO does stop later filed marks from registering if their registration would be confusing to the consuming public given your registration of a similar mark. But the USPTO's power to stop confusing uses is limited. Why? Well, first, they don't police common law uses. If someone only uses a mark that's similar to yours and doesn't attempt to register it, the USPTO has no power to stop the use and probably will never even know about it. Yet, since another's use can damage or weaken your mark, you need to be vigilant and ask that the user stop the confusing use. Second, the USPTO may not catch all potentially confusing marks or you might have a more liberal interpretation of what is potentially confusing than they do. So, you really have the obligation to watch for both use and applications for potentially conflicting marks. So, when you spot a use or an application for a mark that troubles you, what can you do? If you have prior use of a mark, you can alert the other user of your rights and ask them to limit their use to either other goods and services or to certain territory or to change the mark to something less confusing or to stop using that mark altogether. If you have a prior filed application and the other user is also filing an application, if the examiner approves the other mark you have the right to file what's called a notice of opposition. Do you remember we discussed that when your mark has been approved by an examiner, there's a 30 day window where the mark is published for the public to consider? During that 30 day window anyone can file a notice of opposition to alert the user that they object to the registration. This is a big step and you will need an attorney to help you, but if you believe the registration of the other mark would cause consumer confusion and damage your brand, it might be worth making the effort. So, of course, in order to effectively police your mark, you have to monitor others uses and registration. How do you do that? You can do it yourself. Similar to searching a mark, you should run a periodic quick and dirty search over your mark and variations that are close. As a reminder, that might include, running a Google search for common law uses and looking at the USPTO website for applications. You should also monitor the trademark official gazette which comes out every Tuesday and is accessible through the USPTO online. This is the publication were all marks that have cleared the examiners are published for that 30 day window. So, if you missed the mark's use through a Google search and also filing of the application to the USPTO, this looking at the official gazette is your last chance to oppose a registration before it issues. You should run the searches at least monthly and check the official gazette every week. So, this might seem like a lot of work and many individuals and companies agree with you. For that reason, there are companies out there that you can hire to do the trademark monitoring for you. Here's a list of four companies that offer this service. There may be others, but these are some of the most well known. Of course, am not specifically endorsing any one over the other, but if you want to outsource this task you should know that there are companies out there to help you. Their fees vary dependent on how deeply you want the companies to search and how often you want them to deliver report to you, but they're not that expensive. So, you might be thinking that this is just a lot of work and you don't want to incur the expense of hiring a company to do this for you. So, what happens if you just don't police your mark? Well, over time, others can start to use the same or similar marks to yours which will end up confusing the market and ultimately weakening your branding. Conceivably, at some point, the market may become so saturated with similar marks that the USPTO may start to allow marks that are close to yours to issue. Your argument that any other particular mark is damaging your mark because it's confusingly similar to yours will not be as strong and ultimately you may lose all rights over your mark. That is why some companies have sent cease and desist letters to others to shut down potentially conflicting uses. Much more about this in a later session, but every trademark owner's obligation to police their marks as long as they don't overreach. A final word about policing, you have an obligation not only to watch the use of third parties that you don't know who might use an exact or similar mark to yours, but you also have to watch the uses of your authorized users in order to protect your rights. So, what do I mean? Sometimes you will license others to use your mark, an example might be someone who manufacturers for you or a partner or a franchisee. You have to ensure that as your surrogate, they use your mark correctly and consistently and mark it correctly with either that TM, SM, or encircled R symbol. You have to have contract terms with them that are clear and which you enforce. You also have to be careful about their use of your mark alongside theirs, this is called co-branding. You have to be especially careful if you're not in fact affiliated with them. If you don't carefully control another's use of your mark, that's called a naked license and it can cause you to lose your trademark rights. The theory is that you've lost control of the mark such that you might not be the only source and that you might have lost control over the quality of the goods and services that you put out together. You also are required to maintain your registration with the USPTO. Because the US is a use-based jurisdiction, you can't have trademark rights if you're not using the mark in commerce, you periodically have to prove your continued use in order to keep your registration. You also have to pay fees occasionally. As long as you continue to use and maintain the registration, your trademark rights will last forever, but if you neglect to maintain the mark, your trademark can go abandoned. What exactly are the requirements for maintenance? Basically, you have a filing deadline five years after registration, nine years after registration, and then every 10 years thereafter. At the five year mark you're just filing a form that proves your continued use. It's called a section eight. You also have to prove your use by submitting a specimen. At the nine year mark and every 10 years thereafter, you file that continued use form again plus a renewal form which is called a section nine. A section eight in 2018 costs a $125 per class and a combined section eight and section nine costs $425 per class. It's important to check the fees though with the USPTO periodically because they sometimes change. You have a one year window to file the forms and pay the fees and a chance for six months thereafter to file the forms late with an additional fee. You can check to see what forms are due and when they're due by accessing your trademarks registration page and clicking the maintenance tab. This tab also has direct links to the very simple forms. A final note about maintenance forms, at the five year mark, you may also file an additional form that will make your mark incontestable. It's called a section 15 and in 2018 it costs $200 per class. Although, this is absolutely optional, incontestable marks are harder to challenge or cancel because that status protects the marks against certain types of attacks. If you are investing in your brand long term, this option might be helpful to better shield your trademarks and build your goodwill.
