United States: What To Do After Your Business Trademark Is Registered

Registering a trademark is the first step on a crucial path to protecting your brand. And getting a successful trademark registration is a huge accomplishment that marks the end of a lengthy and hassle-filled application process.

However, as satisfying as it is, trademark registration is just a milestone in an ongoing journey to protect your brand and trademark. Even after the lengthy application process you’ve gone through, there’s still more work you need to do.

In this article, we share the essential steps you must take once your business trademark is registered. Read on for the insight.

Trademark Registration Timeframe

Before we go into the steps you need to take after successful registration, it’s best to understand the timeframe of trademark registration so you can fully protect yours from day one.

According to reliable sources, getting a trademark approved and registered by the United States Patent and Trademark Office (USPTO) can take anywhere from several months to even years. Trademark office actions and objections can significantly delay the trademark approval process. Thus, it’s vital to check the status of your trademark application every six months or more frequently after filing.

Here’s a table of the trademark registration process and their estimated timeline.

4 Steps To Take After A Successful Trademark Registration

Contrary to what most people expect, the responsibility of protecting and maintaining your trademark is on you and not the USPTO. So, here are the necessary things you need to do after your business trademark is registered.

Use Your Trademark

Your trademark rights don’t come from applying and registering the trademark—they come from using it in commerce as part of your business. While you can file a trademark registration application to reserve a mark, you can’t get a registered mark unless you’re actively using it.

Thus, to maintain the protection of your mark, you must keep using it. That said, you will need to file for a trademark Statement of Use (SOU).

The SOU is an official form used by the USPTO. You can only file this form once you start to use your trademark. It means you can’t register your business trademark only to tie it up; you also need to use it in commerce.

A statement of use proves that you’re using the trademark in commerce. It also helps reduce the confusion that might exist if several trademarks were registered but never used.

In general, you must file the SOU within six months of the USPTO issuing a Notice of Allowance (NOA). However, if you’re not using the trademark in commerce within the timeframe, you can submit a Statement of Use extension request.

Use The Trademark Symbol

Initially, you were likely using the ‘TM’ symbol with your mark during and before your trademark application process. This symbol means that you only claim common law trademark rights.

However, once you’ve successfully registered your trademark, you earn the right to use the registered trademark symbol—R enclosed in a circle (®)—alongside your mark. This symbol notifies the public of your registered mark rights and is considered proper use of your trademark by the USPTO. Plus, it can deter people from infringing on your mark.

Thus, you may need to update your website and other online presences, logo, labels, product packages, and marketing and promotional materials to include the ® symbol. Remember, improper use of the trademark symbol can weaken your mark and make it more vulnerable to narrowing or challenge.

Monitor Latest Trademark Filings And The Marketplace

Another step to protecting your registered trademark is to stay updated on the latest trademark filings and monitor your industry and marketplace.

You want to ensure that the USPTO doesn’t weaken your trademark by approving a trademark registration that may be too similar to yours. As a registered mark owner, you’re entitled to oppose any new mark that may infringe on yours.

So, make sure to monitor new trademark filings. In general, new trademarks are announced every week. Make it a habit to check these filings and ensure that no mark application is similar to yours.

In addition to monitoring the USPTO trademark applications, you must also monitor your marketplace. Trademark rights start accruing based on use. So, you should go beyond checking new USPTO filings and monitor the marketplace for businesses that may be illicitly using your mark or at least one closely similar to it.

If you don’t enforce your trademark promptly and actively, an infringing party can claim that

their mark has strengthened enough to be recognizable and legitimate on its own. Another business may even challenge your mark for non-enforcement or non-use.

Don’t Forget Your Renewal Dates

In general, your trademark lasts indefinitely as long as you continue to use it and file the necessary maintenance documents during specific periods. Regular renewal filings verify that your mark is still active and viable. You’ll lose your federal registration if you don’t submit the required documents during your renewal dates.

Thus, it’s important to remember your renewal dates.

Between the fifth and sixth years from your trademark registration date, you need to file an Excusable Non-use and/or Declaration of Use. The former is a sworn statement that you’re still using your mark for the services and goods listed in your registration, or it can be an explanation of why you’re not using it.

Between the ninth and tenth years from your trademark registration date, you need to file another declaration of use and an Application for Renewal.

After that, you should file another Declaration of Use and Application for Renewal every ten years.

If you miss these deadlines, you can still file the necessary documents within a six-month grace period. Otherwise, your trademark will be canceled or expire. While you can still use your mark, you must start the registration process again to get federal mark protection.

Takeaway

As you can see, receiving a registered trademark is not the end of protecting your mark. It’s an active and ongoing pursuit, requiring you to protect, defend, and maintain your business identity. So, follow the steps mentioned above to ensure that your trademark retains all the value of the time and effort you’ve put into registering and establishing it.