Congratulations! You’ve successfully registered your trademark and taken the first step toward protecting your brand and assets. But the process doesn’t end there, despite the lengthy application process you’ve already gone through.
Protecting and defending your trademark once registered is an active and ongoing pursuit. However, ensuring your trademark retains its value is critical. We’ll explain what you must do after registering a trademark and outline damaging trademark mistakes to avoid at all costs.
FYI: Businesses that hold trademarks should consider intellectual property insurance to help protect against competitors using your intellectual property without authorization.
What you need to do after your trademark is registered
Getting a trademark approved can take months or even years. Trademark office actions and objections can delay the approval process. But after successful registration, your job isn’t done. You must complete several crucial steps to properly use, maintain and protect your registered trademark.
1. Remember your trademark renewal dates.
Trademark protection is based on active use, which remains true even once you’re registered. The United States Patent and Trademark Office (USPTO) requires regular renewal filings to verify that your mark is still “alive” and viable.
Staying aware of your renewal dates is crucial.
- First renewal: Your first renewal will be five years from the anniversary date of your trademark (the date of initial registration).
- Second renewal: The second renewal is four years after the first renewal (nine years from initial registration).
- All subsequent renewals: Subsequent renewals take place every 10 years after the second renewal.
You can track USPTO forms and applications via the USPTO trademark portal. Trademark holders can check the status of their trademarks anytime by entering their serial or registration number in the Trademark Status and Document Retrieval (TSDR) system.
Tip: Staying organized is crucial. The USPTO won’t remind you of upcoming renewals and doesn’t grant extensions (aside from a six-month grace period requiring additional fees). The responsibility is yours; if you miss a renewal, your mark will automatically be canceled.
2. Use the correct trademark symbols.
You 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.”
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
- Website and platforms where you have an online presence.
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 entitled to formally oppose any new trademark that could infringe on yours.
New trademarks are announced weekly. Stay on top of any that may affect your brand, and take action to prevent their continued use.
4. Monitor the marketplace for trademark infringement.
Trademark rights begin accruing based on use, not registration. To keep your business competitive and protect your trademark, you must go beyond USPTO filings to stay aware of any marketplace entities illicitly using your mark or similar ones.
If you don’t enforce your mark actively and promptly, the infringing party may be able to claim 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. The earlier you register a trademark expansion, 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 action the right way when enforcing your trademarks.
You may encounter a situation where someone is infringing 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 and not 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 more efficiently.
Did you know? Trademarks and copyrights differ. A trademark is a brand-indicating phrase or symbol. You’ll need to apply for a copyright to protect more unique creations, like original photography, video, music, artwork, and written content.
8 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 the following intellectual property mistakes that can derail your best intentions, and avoid them at all costs.
1. Improperly leaning on the ™ symbol
While some businesses simply put a ™ at the end of a brand name, logo or tagline, it doesn’t hold any weight unless you actively seek federal registration with the USPTO. Once approved, you can use the ® symbol to protect your business entity.
Additionally, using the ® symbol incorrectly can get your trademark registration denied and may result in false advertising and fraud charges. 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 process until your trademark is used in commerce. Once it is used, file a statement of use (you have up to three years to do so). 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 the business entity you want to trademark, you may go through all the trademarking steps only to discover 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, 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 federally 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 while making it harder for competitors in your industry to copy your work.
It’s also unlikely that you’ll be able to trademark your name for your business. For example, Kylie Jenner attempted to trademark “Kylie Jenner” for a clothing and accessories line and was rejected by the USPTO due to competing registered trademarks like “Kylee.”
To grasp trademark guidelines, it’s helpful to understand the five trademark categories. Of the five, three are recommended for federal trademark applications.
- Arbitrary (known meaning but unrelated to what it is selling; i.e., Amazon)
- Fanciful (made up words with little meaning; i.e., Clorox)
- Suggestive (hint or a product or service’s attribute without describing its commerce function; i.e., Netflix)
- 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.
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.
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.
Bottom Line: Check your pending application at least once every three months after filing. An application can be marked abandoned if a business fails to respond within six months. Additional fees are required to reinstate the application.
7. Making costly automatic denial errors
While you may have good intentions when filling out the online form for a federal trademark, it can be challenging to complete. If you use the wrong name or provide misinformation, the USPTO could automatically deny your application. Consult an experienced trademark attorney if you’re unsure how to fill out the form.
8. Not monitoring your business trademark
Once approved, you must monitor your trademark and its usage. How you use the trademark, maintaining paperwork and renewals are all your responsibility.
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 against the offending party.
Legal action may require a formal business email to stop using the trademark or a cease-and-desist attorney notification. As mentioned earlier, going about this the right way is crucial, and getting legal advice is advisable. If the issue persists, further legal action may be required to protect your brand’s reputation.