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10-Year Post Registration Management
Congratulations on achieving registration of your trademark! This is the beginning of the life of your trademark as a registered one with all the benefits that come with it. After having reached registration of your valuable trademark, with expenditure of money and hard work, it does not have to remain unmanaged. Leaving the trademark registration unmanaged and unattended can cause a lot of problems. It is U.S. registered intellectual property that, as such, needs continued care. Lack of care can weaken your rights in the trademark (proper use should be audited by expert) or, even worse, can cause the complete loss of those rights (missing to file maintenance documents, or not responding to cancellation proceedings).
By U.S. Trademark Law, the Power of Attorney on file, by which the law firm in charge could act on your behalf, expires at registration. Therefore, formally the law firm is no longer responsible for the trademark registration and its maintenance. Furthermore, the law firm will not be, by law, officially in charge of receiving any notice for you regarding the trademark, the trademark registration and its maintenance, or notices regarding procedures of cancellations, unless it’s put again in charge of it through a new power of attorney.
During the first ten years of registration certain documents MUST be filed, within certain time frames, to keep the trademark alive. This is not an easy task for lay people. We pay monthly for a sophisticated Docketing Software to be alerted of due dates for our clients’ trademarks. There is no chance: if the owner of the trademark does not file such documents timely, the trademark gets canceled and becomes a public dominium.
We encourage our clients who have reached registration to invest in this 10-year package that is pennies per month to avoid ugly surprises. This package is useful also to keep your trademark in proper shape and status. Furthermore, some actions may also be typically needed for the good protection of trademarks like, for example, the sending of a Cease and Desist letter to a third party that is trying to put on the market a similar trademark and reap the benefits of your hard work. We have factored this possible action in this package and more. Read in the table below what is included in this 10-year service package. Note that the only services that are not included are the preparation of the documents that must be filed between the 5th and 6th year from registration (Statement of Continuous Use), and the 9th and the 10th (Statement of Continuous Use and Application for Renewal). Again tale a look at the great advantages you can obtain from this package.
1. Version 08/03/2024
| Service you get | Why | How |
| New Power of Attorney | After the trademark registers, automatically the original power of attorney given to the attorney to apply for registration expires. The law firm is not technically responsible for the maintenance of your trademark. So, a new power of attorney must be considered. The new power of attorney will also allow the law firm, and not the clueless lay person who owns the mark, to be responsible to receive notices of paramount importance from the USPTO or third parties. Such notices, by lay persons, can be exchanged for junk mail or overlooked, and the trademark can be canceled if such notices are not acted upon. This will allow us to filter fraud communications requesting payment of fees that are sent out looking official. A lot of you might have already received such notices. Furthermore, this would allow us to stay on top of your registration and inform you about any cancellation request against your trademark! | We will immediately file the new Power of Attorney and will remain of record until the next maintenance filing is needed and performed. |
| U.S. Licensed Attorney and U.S. Domestic Representative on record for Foreign Entities (companies and individuals) | Since August the 3rd of 2019, things have changed in the USPTO. No foreign entity is allowed to deal directly with the USPTO in trademark matters and must hire a US Licensed attorney. A domestic Representative is crucial to receive important documents and eventual notices of initiation of cancellation proceedings. We have seen, unfortunately, situations where the registered trademark was canceled because, apparently, the cancellation proceeding notification directly to the owner abroad was not received and the owner was not able to protect its trademark! | Filing the new Power of Attorney and the setting of the attorney as a domestic representative will satisfy this need. |
| U.S. Licensed Attorney and U.S. Domestic Representative on record for U.S. Domestic Entities (companies and individuals) | Even US entities (companies and individuals) can benefit from this service as important documents about their trademarks might be received at their place and be mishandled or exchanged for advertisement or other junk mail. There is a risk of missing important information about the trademark that could lead in the worst scenario to the cancellation of the mark. | Filing the new Power of Attorney will satisfy this need. |
| Docketing your Trademark Registration | This is absolutely necessary as it is very, very difficult for a lay person to catch all the due dates for the maintenance filings which are due within certain intervals of time in the first 10 years of registration. This will avoid cancellation of your trademark. | We will register your trademark in the docketing software and pay for such docketing monthly. |
| Maintenance Alert as Needed (about filing of the first mandatory Statement of Continuous Use and eventual Declaration of Incontestability) | The USPTO requires this filing between the fifth and sixth year of registration. If this filing is not performed on time the trademark automatically cancels and becomes of public dominium. | We will receive communications from our docketing software and analyze this communications for you and revert to you for explanation and action and avoid cancellation of your trademark. |
| Maintenance Alert as Needed (about filing of the second mandatory Statement of Continuous Use and eventual Declaration of Incontestability and the Application for Renewal) | The USPTO requires this filing between the ninth and tenth year of registration. If this filing is not performed on time the trademark automatically cancels and becomes of public dominium. | We will receive communications from our docketing software and analyze this communications for you and revert to you for explanation and action and avoid cancellation of your trademark. |
| Sending a “Cease and Desist” Letter | This is a typical letter that is usually sent by a Law Firm to those who are perpetrating an act of infringement against a trademark. This is usually something that costs itself more than this whole package and is crucial in front of an infringement. | The law firm will prepare and send a Cease and Desist letter and will continue the negotiations for a reasonable amount of time and communications to try to settle the dispute. |
| Audit of the proper use of your trademark | This is very important. Improper use of the trademark can lead to loss of rights. This will include advising clients on proper trademark usage by analysis of marketing material, including advising about the consequences of non-usage, to maintain value and avoid loss of rights. | You can request this audit during the course of the service and request a report, and we will provide it to you. |
| Change of Owner’s Address | This is also a very, very important issue. If you change address you must change the address on file in the USPTO. You might not receive documents from the USPTO or third parties and be unable to defend yourself. We have seen trademark owners shocked over cancellations of their trademark that caught them by surprise. | We will file an application in the USPTO for a change of address when it is requested. |
| 10-Year Consultation | You have the opportunity to ask for consultation about any trademark issue you are having on the registered trademark during the next 10 years. | Just contact us without having to worry about billable hours, and we will be available for you. |
