1. Acquiring Trademark Status
2. Maintaining Trademark Status
3. Trademark Rights and Losses
4. Trademark vs. Copyright Protection

Trademark years is the length of time a trademark is deemed active while representing a manufacturer of goods or services with a phrase, design, or symbol. This status must be proven active between the fifth and sixth anniversary and at every 10th anniversary of the trademark registration.

Trademarks are used to create a brand identity that lets a company distinguish its products or goods from competitors. Trademarks can be:

  • A catchphrase
  • A logo
  • "Trade dress" such as a distinct bottle or package design

As the owner of a trademark, it is important to understand you don't own the logo, word, or brand, but rather the right to prevent others from using the trademark on other products or services. Understanding how trademarks work is imperative to maintaining the trademark itself.

Acquiring Trademark Status

An individual or business can acquire a trademark if they are the first to file a federal registration application of intent to use the mark or are the first to use the mark in relation to selling a specific good or service. However, not all applications are approved. If the trademark is too similar to another trademark, the application will be rejected.

If the United States Patent and Trademark Office (USPTO) approves the registered trademark, the owner must then use the trademark to market and sell a product or service.

Maintaining Trademark Status

While patents and copyrights expire at a specific date, trademarks do not. Rather, trademarks remain active as long as the owner continues to use the trademark as deemed under Trademark section 8. Trademark section 8 states that the owner submits a section 8 declaration that includes evidence the trademark is in use. The evidence, or proof, comes via a sworn declaration from the owner stating the trademark's usage.

This declaration must come after the fifth anniversary of the USPTO's registration of the trademark, but not before the sixth anniversary. For a fee, a six-month grace period is possible if the declaration is not completed by the sixth anniversary.

When the trademark registration reaches its 10th anniversary, proof is required to show the trademark is in use. The proof must include photographic evidence of a product that is available for sale and features the trademark. Photographic evidence is then required every 10 years thereafter to maintain an active trademark. If this is not completed, the trademark will be abandoned. Record the fifth and 10-year anniversary on a calendar so you don't miss these important dates.

Trademark Rights and Losses

Trademark owners have rights that include:

  • The ability to sue for infringement in federal court.
  • A public record of the first date of use that can be used in infringement cases.
  • Allowing for the recovery of any attorney fees, damages, lost profits, and costs of infringement.

A loss of trademark rights is possible when the owner stops using the trademark in commerce. This is possible even if the registration has been renewed properly. If the trademark is not actively used, it is considered abandoned by the owner.

Another type of trademark loss is when the trademark itself becomes generic. The term "aspirin," for instance, was originally a trademark of Bayer. Over time, use of the word has become so commonplace it no longer requires trademark protection in the United States. However, the term is still under trademark protection in Canada and many European countries.

Trademark and copyright protections serve different purposes and should not be considered the same. It is important to choose the correct method to protect your creation. To register an image, logo, or slogan that is used with a product or company in commerce, you must submit an application to the USPTO. To gain copyright protection, an author/creator of an original work can include it in the work.

Copyrightable works include the following:

  • Literary
  • Dramatic
  • Architectural
  • Musical
  • Political

Another difference is that copyrights are limited to specific time periods, while trademarks are not. Trademarks remain as long as they maintain an active status and the trademark owner files the necessary declarations and photographic proof on the fifth and every 10th registration anniversary.

If you need help understanding trademark years, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.