Important Things to Do After Your Trademark Is Registered

What you need to do after your trademark is registered

You must focus on the following six crucial actions to properly use, maintain and protect your registered trademark.

1. Note your trademark renewal dates.

Trademark protection is based on active use — it’s not just a one-and-done registration process. The United States Patent and Trademark Office (USPTO) requires regular renewal filings to verify that your mark is still “alive” and viable.

Ensure you’re aware of the following crucial renewal dates:

• First renewal: Your first renewal is required between the fifth and sixth years after the date of initial registration.
• Second renewal: The second renewal must be filed between the ninth and 10th years after registration.
• All subsequent renewals: Subsequent renewals occur every 10 years after the second renewal.

You can track USPTO forms and applications via your USPTO portal. Trademark holders can check the status of their trademarks at any point by entering their serial or registration number in the Trademark Status and Document Retrieval (TSDR) system.

2. Use the correct trademark symbols.

You’ve likely used the ™ symbol with your mark before and during your trademark application process. However, after successfully registering, you should begin using ® — the small, circled “R” — for goods and services covered under the registration.

This serves as public notice of your registration and is considered proper use of your mark by the USPTO. Remember, improper use weakens marks and makes them more vulnerable to challenge or narrowing.

Here are a few areas you must address to enact proper use of the ® symbol:

• Product packaging or labeling
• Marketing and advertising art and copy
• Websites and platforms that comprise your online presence

3. Monitor new trademark filings.

Be sure the USPTO doesn’t weaken your mark by approving registrations that you feel are too similar. As a registered trademark owner, you’re responsible for monitoring new filings. Also, you’re entitled to formally oppose any new trademark that could cause confusion and infringe on your rights.

4. Monitor the marketplace for trademark infringement.

Trademark rights begin accruing based on use, not registration. Keep your business competitive and protect your trademark — go beyond USPTO filings to stay aware of any marketplace entities illicitly using your mark or similar ones.

David Spears, host of the Everything Intellectual Property podcast and YouTube channel, says vigilance is vital. “Be prepared to enforce your trademark by monitoring the mark for misuses,” Spears advised. “Not doing so can result in a weakening of the mark and loss of distinctiveness, which can lead to a loss of the trademark.”

If you don’t enforce your mark actively and promptly, the infringing party may be able to claim that its mark has strengthened enough to be legitimate and recognizable on its own. It may even challenge yours on the grounds of nonuse or nonenforcement.

5. Expand your trademark coverage when necessary.

Your business or product may be different now than when you filed your application. Fortunately, you can file for new trademark applications to cover these changes. The earlier you expand your trademark coverage, the better.

Here are some typical examples of when you might need expanded trademark coverage:

• Expansion into new industries: If you expand into a new industry, you should file additional trademarks covering each new class of goods or services.
• New logos or branding: If you rebrand your business with new logos and branding, update your trademark specimen to show how it now identifies your company.
• New packaging or labeling: If you introduce new packaging or product label designs, update your specimen to illustrate the new use of your mark.

6. Take appropriate action when enforcing your trademarks.

You may encounter a situation where someone infringes on your trademarks. While you want to take action, you must tread carefully. A cease-and-desist or other threatening letter can open up a legal can of worms. You must be sure you’re within your enforcement rights; don’t say anything that could come back to haunt you in the event of a business lawsuit or other litigation.

Consult an attorney or legal support services to protect you and your mark and resolve things as efficiently as possible.

10 trademark mistakes to avoid

Receiving a federal registration for a new trademark takes research, patience and preparation. However, the process can be challenging and making mistakes is easy.

Consider — and avoid at all costs — the following intellectual property mistakes that can derail your best intentions.

1. Improperly leaning on the ™ symbol.

Some businesses simply put a ™ at the end of a brand name, logo or tagline. However, it doesn’t hold much weight unless you actively seek federal registration with the USPTO. Once approved, you can use the ® symbol, which indicates official federal trademark protection.

Additionally, using the ® symbol incorrectly, such as before your trademark is officially registered, can lead to legal consequences. Such repercussions include potential claims of false advertising and fraud. Consult a business lawyer if you have any questions.

2. Not filing an intent-to-use application.

Say you’re writing a business plan and prefer to trademark your business entity before you make your first dollar. In this case, you must file an intent-to-use application with the USPTO to protect your trademark for use at a later date.

Your trademark registration won’t be processed until your trademark is used in commerce. Once it is, you will file a statement of use; you have up to six months to file, with extensions available for up to three years. This filing helps the trademark office understand how you plan to use your trademark in commerce.

3. Inadvertently infringing on another trademark.

If you fail to research your potential trademark, you may go through all the trademarking steps only to discover that someone else has beaten you to the punch. Your mistake can lead to legal issues and an expensive rebranding process.

To research existing, abandoned and canceled trademark registrations, use the USPTO trademark filing database. Or, you can use Google and the World Intellectual Property Organization (WIPO). Research should include logo use and taglines. You must use the trademark first — and be approved — to own it.

4. Registering a trademark that’s too generic.

U.S. trademark law prohibits applicants from registering generic words and phrases. The law was enacted to prevent monopolies from forming in industries. Trademarking unique phrases or words helps distinguish your business and tell your brand’s story. It also makes it harder for competitors in your industry to copy your work.

It’s also unlikely that you can trademark your name for your business. For example, Kylie Jenner attempted to trademark “Kylie Jenner” for a clothing and accessories line but was rejected by the USPTO due to competing registered trademarks like “Kylee.”

Intellectual property specialist Rebecca Reil emphasizes the importance of following USPTO rules to the letter and ensuring your mark is distinct. “One way to maintain your registration and increase its clarity is to use a descriptor following the trademark,” Reil advised. “For example, using FedEx courier rather than just FedEx strengthens the mark.” Trademark descriptors help you avoid registering a trademark that’s too generic. “Think of how people use aspirin these days,” Reil added. “It was a protected trademark back in the day but was used too generically over time and lost trademark rights.”

Understanding the five trademark categories — three of which are recommended for federal trademark applications — is helpful for grasping trademark guidelines.

Recommended:

• Arbitrary: known meaning but unrelated to what it is selling; e.g., Amazon
• Fanciful: made up words with no prior meaning; e.g., Clorox
• Suggestive: hint of a product or service’s attribute without describing its commerce function; e.g., Netflix

Not recommended:

• Generic: general class, not specific
• Descriptive: describe a product’s function, ingredients, etc.

5. Choosing the wrong class for your trademark.

Many businesses make costly mistakes when choosing classes for their trademarks. The U.S. filing system uses numbers to identify products and services. It has 45 categories: 34 for products and 11 for services. Within that number system, each category expands with dozens of options.

Spears notes that obtaining a trademark doesn’t provide you with unlimited protection. “If you register your mark for clothing, but start using your mark for medical supplies, then you are using your mark outside of the protected scope,” Spears explained. “You need to also register your mark in the medical supplies class if you also want to obtain protection in that particular category.”

Choosing the wrong class could result in losing your trademark protection. The only way to fix a class mistake is by reapplying with a new form and payment fee. “You have to make sure you are getting protection in every particular class you are conducting business or using the trademark in if you want to protect the mark properly,” Spears stressed.

6. Inadvertently abandoning your trademark.

After filing a federal trademark application, you should receive a reply from the USPTO. If you don’t receive a timely reply, check to see if the office needs more information or clarification to process your trademark. Failure to follow up can lead to an application being labeled “abandoned,” costing you time and money.

7. Making costly automatic denial errors.

While you may have good intentions when completing the online form for a federal trademark, filling it out incorrectly is easier than you think. The USPTO could automatically deny your application if you use the wrong name or provide misinformation — even unwittingly. Consult an experienced trademark attorney if you’re unsure how to complete the form.

8. Not monitoring your business trademark.

Once approved, you must monitor your trademark and its usage. You are responsible for how you use the trademark and maintain paperwork and renewals.

You also must protect your business from trademark infringement by monitoring the competition and other entities. While the USPTO tries to prevent trademark infringement, it is up to the business owner to bring legal action.

Legal action may require a formal business email or a cease-and-desist attorney notification to stop using the trademark. As mentioned earlier, it is crucial to go about this the right way and get legal advice. If the issue persists, further legal action may be required to protect your brand’s reputation.

9. Improper documents at renewal.

Renewing your trademark in commerce requires the owner to submit supporting documents, including specimens — samples of your trademark as used in commerce. “A declaration of use is submitted at the time of renewal, which is to prove to the USPTO consistent and proper use of the trademark registration over the years,” Reil explained.

However, submitting improper documents or fake specimens at renewal can have dire long-term consequences. “As part of the declaration of use, [a] specimen is submitted, which can include a website screenshot, images of products with the trademark showing, etc.,” Reil noted. “Something I unfortunately came across that wasn’t appropriate was a fake website or fake image to appear as if the mark was being used. It is all too easy to obtain with AI technology today.”

Suggested commerce specimens include but are not limited to the following:

• Photos of the goods
• Labels and tags for the goods
• Packaging for the goods
• Sales displays where the goods are sold
• Webpages selling the goods
• Software as goods
• Television and radio commercials for the services
• Marketing materials showing a direct association between your trademark and the services
• Signage where the services are rendered
• Material used in the providing or rendering of services
• Invoices showing a direct association between your trademark and the services
• Business cards and letterhead showing a direct association between your trademark and the services

10. Not hiring a professional to oversee a trademark.

Busy entrepreneurs and business owners have a lot on their plates, and attending to trademark details may be overwhelming without help. Hiring a professional to oversee your trademark may be well worth the cost for the peace of mind it provides.

Importantly, professional help can remove the fear of missing deadlines. “I think the biggest benefit is [professional trademark assistance] takes the burden off of you as the trademark owner to remember important dates associated with maintaining the mark with the [USPTO],” Spears said.

Spears recalled a case where a business owner neglected to renew a long-held trademark. “Upon filing a new trademark application for the mark, another company opposed her trademark application, which is costing her tens of thousands of dollars in an ongoing battle,” Spears shared. “She had to close down stores due to having to spend money on legal costs fighting to get her trademark registered again.”

A professional handling your trademark process would make such a costly oversight unlikely.  “The chances of this situation happening when a professional oversees your trademark are very slim, as professionals typically have systems in place to pay maintenance fees as they come due,” Spears said.