Trademarks protect the usage of a name, phrase, logo or design that indicates the origin or source of goods or services.
Brand names and signature logos are prime examples. Trademarks can often be among a business’ strongest assets, building brand recognition among consumers and goodwill for the company.
However, trademarks must be used in connection with the sale of goods or provision of services to remain valid. In the United States, this “use in commerce” must be demonstrated before a federal trademark registration will be granted. Continued use must also be re-established when renewing a trademark registration every 10 years, and when filing for incontestable status at 5 years after registration.
Most countries outside the U.S. do not require demonstrating use before granting a registration. However, they still require use. If the registration is challenged, such as by a competitor or another with a confusingly similar mark, the trademark owner must be able to prove use of the trademark in connection with the relevant goods or services in that country or the registration may be cancelled. For instance, many countries such as Canada, Mexico, Australia, China, Japan and South Korea permit such cancellation proceedings within 3 years of registration. Others, like the European Union and United Kingdom, allow registrations to be cancelled up to 5 years after registration if not in use.
Therefore, while trademark registration is an important step in protecting marks, making sure the trademark is being used is just as important to keeping the registration in force and protected from attack. Regular audits can be helpful in making sure trademarks are continuing to be used in key markets.
Feel free to contact us with any questions you may have about trademark protection in the U.S. or globally.
This post was written by Jessica Hauth Mozingo
