Obtaining a federal trademark registration is an important milestone for any business. A registration can provide significant benefits, including nationwide notice of your claim of ownership and important tools for protecting your brand.
But obtaining the registration is not the end of the process.
One of the most important—and sometimes overlooked—principles of U.S. trademark law is that trademark rights are tied to use. A business that stops using a mark in commerce may eventually put its trademark rights, and potentially its registration, at risk.
For business owners, the lesson is straightforward: protecting a trademark requires more than registering it. You must continue using and maintaining it.
Trademark Rights Are Built on Use
Unlike some other forms of intellectual property, trademarks exist primarily to identify the source of goods or services and distinguish them from those offered by others.
That function depends on actual commercial use.
A trademark that remains on a registration certificate but disappears from the marketplace can become vulnerable. Under federal trademark law, nonuse of a mark for three consecutive years creates a presumption of abandonment, although abandonment can potentially occur under other circumstances as well.
This makes continuous use an important component of any long-term trademark strategy.
What Does “Use in Commerce” Mean?
Simply owning a registration, domain name, social media account, or old inventory does not necessarily establish current trademark use.
Generally, a trademark should be used bona fide in the ordinary course of trade, rather than through token activity undertaken merely to preserve rights.
For goods, this commonly involves using the trademark on the goods, their packaging, labels, displays, or other qualifying materials while the goods are sold or transported in commerce.
For services, the mark generally must be used or displayed in connection with the services, and the services must actually be rendered in commerce.
The precise requirements can vary depending on the circumstances, which is why businesses should periodically evaluate how their registered marks are actually being used.
What Happens When a Business Temporarily Stops Using a Trademark?
A temporary interruption does not necessarily mean that trademark rights immediately disappear.
Businesses sometimes suspend products or services because of supply-chain problems, renovations, regulatory issues, restructuring, economic conditions, or other legitimate circumstances.
The important question can become whether the trademark owner has discontinued use with an intent not to resume use.
For that reason, companies facing an interruption should document their circumstances and plans carefully rather than assuming an existing registration will indefinitely preserve their rights.
Your USPTO Registration Must Reflect Reality
Trademark owners should also remember that maintaining a federal registration requires periodic filings with the U.S. Patent and Trademark Office (USPTO).
At those stages, owners generally must demonstrate continued use of the registered mark for the goods or services for which continued protection is claimed, unless an applicable exception applies.
This creates another reason to regularly review a trademark portfolio.
A registration may list products or services that the company no longer offers. The appearance of a logo may have changed. Ownership may have changed following a corporate transaction. A business may even discover that its current use differs significantly from what was originally registered.
These issues are better addressed proactively than when a USPTO deadline or trademark dispute arises.
Five Questions Every Trademark Owner Should Ask
Periodically review your portfolio and ask:
- Are we still using each registered trademark in commerce?
- Are we still using it for all of the goods and services covered by the registration?
- Does our current use of the mark match the mark we registered?
- Do we have appropriate evidence documenting current use?
- Are there upcoming USPTO maintenance or renewal deadlines?
If the answer to any of these questions is unclear, a trademark portfolio review may be appropriate.
Don’t Forget About Licensing
Continuous use issues can also arise when trademarks are licensed to franchisees, distributors, affiliates, or other third parties.
Licensing can preserve and expand the commercial reach of a brand, but trademark owners should maintain appropriate control over the nature and quality of the goods or services offered under their marks.
Trademark protection is not merely about allowing someone else to use a name. Proper trademark licensing and oversight are important components of protecting the goodwill associated with the brand.
A Trademark Portfolio Should Evolve With Your Business
Businesses change.
Products are discontinued. New services are introduced. Logos are redesigned. Companies expand internationally. Corporate entities merge or reorganize.
Your trademark portfolio should evolve with those changes.
A periodic trademark audit can identify registrations that need attention while also uncovering valuable brands, product names, slogans, or logos that the business is actively using but has never registered.
In other words, an audit isn’t only about protecting old registrations—it can identify new opportunities for protection.
Registration Is the Beginning, Not the Finish Line
Securing a federal trademark registration is an important investment in your brand. Maintaining that investment requires continued attention.
Use your trademarks. Document that use. Monitor your registrations. Keep your ownership information current. Review your portfolio as your business evolves.
The strongest trademark strategy is not simply obtaining registrations—it is ensuring that those registrations continue to correspond with the brands your customers actually encounter in the marketplace.
Is It Time for a Trademark Portfolio Review?
If your company has registered trademarks that have not been reviewed recently, now may be a good time to evaluate whether your registrations accurately reflect your current business.
Augusto Perera Intellectual Property Law assists businesses with trademark registration, maintenance, renewals, portfolio reviews, licensing, assignments, and brand-protection strategies.
Protect the trademarks you’ve worked hard to build.
Contact us to schedule a trademark portfolio review.