Back to Menu
Connecting You To Opportunity
What can we help you find?
| Login|Sign Up
Back to Menu
Hello
  • Login
  • Sign Up

Important Things to Do After Your Trademark is Registered

ByJosh Gerben,
business.com writer
|
Nov 28, 2014
Home
> Business Basics
SHARE THIS

Congratulations! You've successfully registered your trademark and taken the first step on this important path to protecting your brand. That's right: even after the lengthy application process you've already gone through, there's still more work to be done.

Protecting and defending your trademark once you've registered it is an active and ongoing pursuit — but it's critical to do so to ensure that your mark retains all the value of the effort you've put into establishing it.

Related Article3 Ways to Protect Your Business's Intellectual Property

There are several important things to remember in order to properly use, maintain and protect your registered trademark. Read on to learn what steps you should be taking and how to best go about them.

Remember your trademark renewal dates

Trademark protection is based on active use, and that remains true even once you’re successfully registered. The United States Patent & Trademark Office requires regular renewal filings to verify that your mark is still “alive” and viable.

The most critical thing to do? Stay aware of your renewal dates:

Important note: The USPTO will not remind you of upcoming renewals and does not grant extensions (aside from a six-month grace period requiring additional fees). The responsibility is fully yours, and if you miss a renewal, your mark will be automatically canceled.

Use the correct trademark symbols

You were likely using the “TM” symbol with your mark before and during your trademark application process. Once you’ve successfully registered, however, you should begin using the small circled “R.” This serves as public notice of your registration and is considered proper use of your mark by the USPTO — remember that improper use weakens a mark and makes it more vulnerable to challenge or narrowing.

Here are a few areas of the many that you’ll need to address as you enact proper use of the “R” symbol:

  • Product packaging or labeling
  • Marketing and advertising art and copy
  • Your website and other online presences

Monitor new trademark filings

Be sure that the USPTO does not weaken your mark by approving registrations that you feel are too similar. As a registered trademark owner, you’re entitled to formally oppose any new trademark that could potentially infringe on yours.

New trademarks are announced weekly — stay aware of the ways in which the protections of your mark may change, and take all actions available to you to try and prevent that from happening.

Monitor the marketplace

Trademark rights begin accruing based on use, not registration, so you’ll need to go beyond USPTO filings to be aware of anyone in the marketplace who may be illicitly using your mark, or one similar to it.

If you don’t enforce your mark actively and promptly, the infringing party may be able to make a claim that their mark has strengthened enough to be legitimate and recognizable on its own — or even challenge yours on grounds of non-use or non-enforcement.

Related Article: Building Barriers to Entry- How to Keep the Competition at Bay

Expand your trademark coverage when necessary

The earlier you register a trademark, the better, so the case may be that your business or product is different now than it was when you filed your application. Here are some typical examples, and what you need to do:

  • Expansion into new industries (file additional trademarks covering each new class of goods or services)
  • New logos or branding (update your trademark specimen to show how it now identifies your company)
  • New packaging or labeling (update your specimen to illustrate the new use of your mark)

Take action the right way

A cease-and-desist or other threatening type of letter can open up a legal can of worms. You need to be sure that you are within your rights of enforcement, and that you don’t say anything that could come back to haunt you should litigation be necessary. Legal assistance in situations like these can keep you and your mark protected, and will often resolve things more efficiently.

Josh Gerben
Josh Gerben
See Josh Gerben's Profile
Josh Gerben is the principal of the Gerben Law Firm, PLLC, a firm that focuses specifically on trademark law and services for business owners in San Francisco as well as the rest of the United States and 18 countries worldwide. Gerben Law works with individuals and ecommerce business looking to protect their assets through search, application and registration processes. Visit Gerben Law Firm’s blog to learn more.
Like the article? Sign up for more great content.Join our communityAlready a member? Sign in.
We'd love to hear your voice!
Login to comment.
LoginSign Up