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After Your Trademark Is Registered–Here Are The Things You Should Know

It’s exciting to get your trademark application approved for registration. Plus, you get a fancy certificate to show off once the...
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Posted on
May 28, 2020
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It’s exciting to get your trademark application approved for registration. Plus, you get a fancy certificate to show off once the registration certificate is processed.

Here are some things you should know about your US registered trademark.

RENEWALS

  • You will have to renew your trademark every 10 years after registration. Each renewal requires two documents—a renewal request and a declaration of use. The 10-year spans go by slowly, so you should also create your own reminders for these deadlines.
  • Renewals require that you continue to use your trademark with the class(es) of goods and services specified on your registration. You will be required to submit a declaration of use at the time of the renewal. If you stop using your mark with the specified goods and services at any point but plan to renew it later, your ability to renew might be compromised.
  • Additionally, there is an extra requirement to file a separate declaration of use around 5 years after registration.
  • If you’re not using your trademark properly, you won’t be able to provide the required documentation to the US Patent & Trademark Office. There is an option to provide evidence of “excusable nonuse,” but the availability of this option is limited.

INCONTESTABILITY

  • At the 5-year mark (or later), you can file a request that your trademark be made “incontestable.” This significantly raises the level of effort for anyone who might try to invalidate your trademark after it is incontestable.
  • In order to qualify for incontestable status, you have to declare that you have been using your trademark continuously for 5 years prior to the request. If you’re using you trademark properly from the time it is registered, you should request incontestable status at the same time you file your 5-year declaration of use (see above).

SCAM REGISTRIES/RENEWALS

  • BE AWARE OF SCAMS targeting you as the trademark owner. Many organizations will try to contact you about putting your trademark on a registry or paying the renewal fees. These are scams because they provide no real value, charge excessive fees for regular services, or try to redirect the control of your trademark.
  • Depending on how your correspondence is set up with the US Patent & Trademark Office, it is possible you will receive some correspondence directly. If you have an attorney, the USPTO plans to send all official correspondence to your attorney on your behalf. Anything you receive directly, especially if requesting any payment whatsoever, should be discarded or sent to your attorney for review. The requested payments are often in the range of $500-3,000. Any payment you make to another organization will likely be unrecoverable.

DESIGNATIONS ® AND ™

  • You can now use the ‘®’ (circle ‘R’ designation) when you use your trademark with the class(es) of goods and services specified on your registration.
  • You can use your trademark with other types of goods or services, but use the ‘™’ (common law ‘TM’ designation, or the equivalent ‘SM’ service designation) with anything other than your specified goods and services.
  • If you use other forms of your trademark (e.g., changes in spelling or stylization, especially for marks with specific design elements), use the ‘™’ instead of the ‘®’ designation.

ENFORCEMENT

  • Enforcement of your rights is dependent on the trademark owner. You or your attorney can set up a monitoring service to ‘police’ your mark in the broader marketplace.
  • Similar to enforcement against infringers, you can also file an ‘opposition’ for another similar mark the USPTO is planning to issue to another applicant. This is a specific action filed at a specific time during the examination process of the other applicant’s mark. Your monitoring service or attorney can monitor for other mark registrations that might be subject to opposition.
  • You can voluntarily register your mark with other organizations, law enforcement agencies (e.g., US Customs and Border Protection can monitor overseas imports), and private entities (e.g., Amazon.com’s brand registry for sellers). If applicable, some of these registrations provide you with additional services.

INTERNATIONAL PROTECTION

  • If you have not already applied for trademark protection in other countries, you can use your US trademark registration as the basis for requesting protection in other countries. There are various routes into other countries, so let us know if you want to explore these options.

If you don’t want to worry about these details, get qualified legal counsel to help you out. That way you can focus on building your brand value, while your attorney focuses on protecting the legal aspects of your brand.

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Legal Disclaimer: This general information does not establish a legal relationship with any attorneys or law firm without a written and signed legal representation engagement agreement.

Jeff Holman
Jeff Holman draws from a broad background that spans law, engineering, and business. He is driven to deploy strategic business initiatives that create enterprise value and establish operational efficiencies.
Sky Blue Envelopes

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