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What are steps to take to protect a trademark?

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leon2112 | (Level 3) eNoter

Posted November 10, 2013 at 10:21 PM via web

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What are steps to take to protect a trademark?

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Tamara K. H. | Middle School Teacher | (Level 1) Educator Emeritus

Posted November 11, 2013 at 2:07 AM (Answer #1)

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Protecting a trademark is definitely a vital thing for a business or organization to do as the trademark represents the business's or organization's offered products or services. However, in today's world where there are over 600 million websites, protecting trademarks is becoming increasingly difficult to do.

William R. Simon Jr. of the San Diego Law Firm states that the first step in protecting a trademark is to actually do comprehensive research to make sure that your trademark is unique or if similar trademarks are already being used and in what manner. This initial research step will not only insure that you yourself will not become guilty of trademark infringement, it will also insure that your trademark is unique enough to prevent infringement and also ensure that yours can be registered.

The next step is to register the trademark with the United States Patent and Trademark Office (USPTO), but before one can do that, the company or organization must first begin using the trademark. While one can file an Intent-to-Use application, one actually cannot register a trademark unless one is using it.

Once the USPTO has approved the trademark registration, the USPTO will then publish the trademark for "opposition." Publishing it for opposition gives other businesses and organizations a chance to oppose your new trademark with the claim that it infringes upon their own trademark. When others do oppose the trademark, the business or organization with the new trademark must be ready to fight the opposition claim with evidence that the trademark was well-researched and original. Businesses and organizations with a new trademark must also be ready to face a "petition to cancel registration" from another business or organization that can be submitted to the USPTO. In the event that that happens, again, the business or organization with the new trademark must be ready with evidence to defend reasons why the trademark should not be canceled. Simon also assures that it becomes increasingly difficult to cancel a trademark registration five years after trademark registration.

Another step to take to protect your own trademark is to continue to do research, on the internet and otherwise, to make sure that your own trademark is not being infringed. You also have to be ready to take legal action if you do see trademark infringement, and if you do not take legal action, you may lose your own trademark rights due to what is called "acquiescence." Also, be sure to continually use your trademark and in a consistent manner because "different types of trademark registrations protect different  types of use." If you fail to use your trademark both continually and consistently, you may also lose your trademark rights due to "abandonment."

Final steps to protecting your trademark: You must inform the USPTO that you are still using your trademark between the 5th and 6th year after trademark registration. Also, between the 9th and 10th year after registration, you must also renew your trademark's registration and continue to do so after that between every 9th and 10th year.

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