Federal trademark registration, unlike copyright or patent protection, does not protect your right to a business name for a fixed period of time.
The protection of Federal trademark registration lasts only so long as you are continuing to use the name or logo in interstate commerce.
What does that mean?
Use in Commerce & the Right to Trademark Registration
The Federal Lanham Act (“the Trademark Act”) states that each Federal trademark registration shall remain in force for 10 years.
This is indeed a fixed number of years—but a mark may be canceled within that period of time or the expiration of that period of time if it fails to meet the original criteria for registration.
The primary reason for this would be if the owner the mark ceases to use that name or logo (or slogan or color or smell or—you get the picture!) in interstate commerce in relation to the specific goods or services for which it was registered.
A registered trademark will be canceled within that period of time if the proper steps are not taken to maintain the registration.
To maintain a Federal trademark registration, you must, at required intervals, prove that you are still using the mark in interstate commerce in relation to the registered goods or services.
But what is “interstate commerce?”
“Interstate commerce” is a term used to designate the commercial flow of goods or services across state lines.
In order to be eligible for Federal trademark registration at all, you must be selling something across state lines, in other words.
If you are selling apples from a roadside stand in rural Michigan, you are likely not eligible for Federal trademark registration.
On the other hand, if your roadside stand is in Luna Pier, Michigan, just north of the Michigan-Ohio border, perhaps you do sell a lot of apples to folks driving northward from Ohio … It all depends.
If you stop selling apples entirely, regardless of who might buy them and from what state, you are definitely not eligible for Federal trademark registration.
Your trademark registration will be canceled at the 10-year mark if this is the case.
Why is that?
Consumers’ Right to Know What They Are Buying & From Whom
Trademark registration does not exist to protect your fancy logo or catch business name, slogan, product-name, or tag-line as a creative work.
That is the job of copyright protection.
Trademark registration exists to protect consumers’ right to know what they are buying and from whom when identifying it by a word or design.
When you buy that six-back of Coca Cola from the supermarket cooler, your understanding upon spotting the familiar red and white (or silver) cursive logoed design on the can or package is that it was manufactured and bottled by the Coca Cola Bottling Company of Atlanta, Georgia.
You would be sorely disappointed if it turned out that it was bottled in your Uncle Jimmy’s garage late at night.
Trademark registration exists to ensure that whomever (or whatever entity) is using a logo, name, or package design is the right one to do so.
Uncle Jimmy would be in violation of Federal law for selling knock-off cola using a logo and package design registered by the Coca Cola Corporation. (Not to mention the local health code.)
Trademark registration is only required so long as the product or service is being sold, therefore.
Even if you are the proper owner of a registered trademark, as far as Federal law is concerned, you need it anymore if you stop using it in commerce.
There is no consumer to protect in that case.
The “common law” (non-statutory) right to the use of the mark will open back up for use by someone else who will utilize it in interstate commerce.
This is how, for instance, the old Shinola brand was resurrected (very successfully) in Detroit, after many decades of non-use in commerce.
Shinola is also a good example of the requirement that the continued use in commerce be in relation to the product or service for which the trademark was registered.
Originally, Shinola was a shoe polish brand founded in New York in 1877. It went out of business in 1960.
The current Shinola iteration was (re-)founded in 2011 as a manufacturer of watches (and now manufactures many, many different types of luxury goods).
Imagine that the original company had not evaporated and the entity had continued in operation rather than going out of business … The switch from manufacturing shoe polish to manufacturing luxury watches would have required a new trademark registration application to have been filed for the watch products.
The old registration filed in relation to shoe polish would only have survived until 1960, when (in our scenario) shoe polish ceased to be produced.
Maintenance and Renewal of a Registered Trademark
If all of this is the case, you must then attest to the fact of continued use in commerce at required intervals to maintain and “renew” the trademark registration.
Between the 5th and 6th years following initial registration, you must file a Statement of Use with the USPTO to keep the trademark registration alive.
This Statement of Use is essentially a form Affidavit attesting to the mark’s continued use in commerce in relation to the registered products and/or services.
A “Specimen” of that use must accompany the Statement.
The Specimen is evidence demonstrating to the USPTO examiner reviewing the file that the mark is in use as required.
If you operate a web-based business, it may be a few screenshots of the commercial website featuring the name, logo, or slogan. It may be any number of other things depending upon the sort of business being operated, the product or service being sold, and the advertisements and marketing efforts involved.
Another Statement of Use must be filed within the year after the 10th post-registration year—and every 10 years after that.
The Immortal Trademark Registration
How long does a Federal trademark registration last?
So long as it remains in use in the stream of public commerce across state lines and so long as you continue to use it to identify the products and services for which it was registered.
And so long as you continue to maintain it with the timely filing of proper Statements of Use and proper Specimens of that use.
If you have registered a trademark and need assistance with the filing of a Statement of Use or need to register a new trademark, contact us by clicking the button below.
We are a Detroit-based intellectual property law firm but offer virtual consultations and represent clients nationwide for Federal trademark matters.