Trademark Life Cycle: A Legal Perspective

The trademark life cycle involves several key legal stages, from initial selection to ongoing maintenance.

Below is a step-by-step overview:

Step 1. Trademark Search & Clearance

  • Check for conflicts with existing trademarks, assess risks and determine if the mark is registrable.
  • Optional: perform a comprehensive trademark search for additional risk analysis.

Step 2. Application & Filing

  • Prepare and submit the trademark application with the United States Patent and Trademark Office (USPTO).
  • Include details such as trademark name, class of goods/services, and proof of use (if applicable).
  • Pay required filing fees.

Step 3. Examination & Office Actions

  • The USPTO examining attorney reviews the application for compliance with trademark laws.
  • If issues arise (e.g., the likelihood of confusion, descriptiveness), an Office Action is issued.
  • The applicant must respond within six months to avoid abandonment.

Step 4. Publication & Opposition

  • If approved, the trademark is published in the Trademark Official Gazette.
  • Third parties have 30 days to file an opposition if they believe the mark conflicts with theirs.
  • If no opposition is filed (or it is unsuccessful), the application proceeds to registration.

Step 5. Registration

  • If the application was filed under “use in commerce” (§1(a)), a registration certificate is issued.
  • If the application was filed under “intent to use” (§1(b)), a Notice of Allowance is issued, requiring the applicant to submit a Statement of Use (SOU) and a specimen within six months.

END OF APPLICATION FILING – RL POA expires with USPTO

Step 6. Post Registration Maintenance

6.1 Maintenance

  • Registrants must file maintenance documents to keep the trademark active:
    • Between years 5–6: File a Declaration of Use (§8) to confirm continued use.
    • At year 10, and every 10 years thereafter: File a Declaration of Use & Renewal (§8 & §9).

6.2 Enforcement & Protection

  • Trademark owners should actively monitor for infringement and take legal action (e.g., cease-and-desist letters, litigation).
  • Failure to enforce rights can weaken the mark’s protection.

6.3 Renewal & Continued Use

  • As long as renewal requirements are met and the trademark remains in use, trademark rights can last indefinitely.

If the mark is abandoned or not renewed, it can be canceled and become available for others to register.

By following these legal steps, businesses can secure, maintain, and protect their trademarks effectively.