What should I do after my trademark is registered?
Congratulations, you are now the owner of a registered trademark! Next steps include utilizing your new investment and protecting the mark to ensure it remains valid:
- Begin using the ® symbol instead of ™
- Monitor the USPTO database and the marketplace for potential infringement
- Meet USPTO renewal deadlines
1. Use ® instead of ™
Once your trademark is registered, you are allowed to stop using the TM (™) or SM (℠) symbols and switch to the circled R (®). While the first two aforementioned marks indicate a claim over the trademark, the ® demonstrates possession of a federal registration to back up that claim.
Using the circled R symbol with your trademark is a privilege and is exclusively reserved for trademarks that have been applied for and registered with the US federal government. Using ® with a mark that does not have registration is actually a violation of federal law and can be used as grounds to deny a trademark application due to inappropriate symbol utilization.
Prior to registration, the only symbols permitted for use are ™ and ℠. These symbols are appropriately used before or during the application process to indicate ownership of a mark. The small capital TM stands for trademark and is used to represent physical goods, such as clothes, sunglasses, or food items. SM means service mark and is used to represent offerings such as legal, business, or financial services.
In commerce, the word ‘trademark’ is often used to refer to both trademarks and service marks interchangeably. Likewise, a ® is universal and can be used to replace ™ and ℠—but only once the mark is registered.
2. Monitor to prevent infringement
One of the most important functions that a trademark owner must perform is policing—and while your registration and usage of the ® symbol can be major deterrents for potential infringers, it is still very important to ensure that another party is not undermining your business by using your trademark without your permission. This includes policing for direct infringements as well as usage of marks that may be confusingly similar to yours.
Trademark law requires owners to police the marketplace to eliminate the threat of infringement and therefore integrates trademark protection into mark ownership. If an outside party is able to maintain unauthorized use of a mark for an extended period of time, that can ultimately result in a loss of trademark rights for the registered owner due to their lack of vigilance. If someone else would utilize your trademark in an unauthorized manner without your notice, they could actually use your neglect in protecting the mark as a defense against any legal enforcement action brought against them. By policing your mark, you are ensuring that your trademark rights remain as strong as possible.
The best practice for trademark policing is safeguarding your property by preventing problems prior to their occurrence. Setting up a Google alert for brands or businesses using your mark or one similar, taking advantage of the USPTO’s online database, and using a professional monitoring service are just a few ways that are both accessible and effective. Above all, however, enlisting the help of a trademark lawyer is the most efficient way to confirm that no one else is encroaching on your trademark rights, and Gerben IP offers a flat annual fee for their multifaceted monitoring service. This package includes searches generated by industry-leading search software, quarterly reports, and personalized attorney analysis of potential threats to your business.
3. File renewals
Another key element of trademark protection is ensuring timely renewal filings. The very first renewal due for your trademark post-registration will be due five years from the original registration date. The second renewal is due ten years from the original registration date, and every ten years thereafter. Each renewal due date is followed by a year-long window in which the filing can be made; once that window closes, however, the trademark will fall into a grace period and will be at risk of abandonment.
Maintaining the renewal schedule is the responsibility of the trademark owner and is an essential part of mark protection following registration. The US government does not notify trademark owners of approaching deadlines, so diligence in keeping up with these dates is imperative. For each renewal filing, the owner must prove use in commerce of all of the goods and services described in the trademark’s classes, as well as submit a fee for each class. Failure to adequately prove the trademark’s use in the marketplace can result in the loss of the registration.
Engaging the assistance of a trademark lawyer is the most effective way to guarantee that no renewal windows are missed, the trademark has adequate use in the marketplace, and filings are drafted correctly. Gerben IP’s previously mentioned monitoring service also notifies the trademark owner of upcoming deadlines and renewal filings, and a team of attorneys ensures that each filing is made with proper specimens in a timely manner to secure a successful renewal.
Post-registration actions for your trademark
Ultimately, there are three primary concerns for a trademark owner once their mark is registered with the US government: correct symbol usage, policing the marketplace for potential infringement matters, and making renewal filings. While navigating through this process may seem daunting, enlisting the help of an experienced trademark attorney can help you see the greatest return on your investment as your company continues to grow. The work may not pause once your trademark is registered, but the benefits a mark can bring to your brand, business, or product are worth the diligent protection.