• So, You Have a Registered Trademark...Now What?
  • December 16, 2014 | Author: Sheila E. Eddy
  • Law Firm: Smith Haughey Rice & Roegge, P.C. - Grand Rapids Office
  • Congratulations, you have successfully registered your trademark with the United States Patent and Trademark Office (USPTO) on the Principal Register! This means that you get to enjoy many advantages that you did not have before, including:
    • Public notice of your claim of ownership of the mark

    • A legal presumption of your ownership of the mark and the exclusive right to use the mark throughout the U.S. on or in connection with the goods and/or services listed in the registration

    • The ability to bring an action concerning the mark in federal court

    • The use of the U.S. registration as a basis to obtain registration in foreign countries

    • The ability to inform the U.S. Customs and Border Protection (CBP) Service of your trademark registration in order to prevent importation of infringing foreign goods

    • The ability to attain "incontestability" status after five years of registration and continuous use in commerce

    • The right to use the federal registration symbol ®

    • A listing in the United States Patent and Trademark Office’s online databases

    Along with these several benefits, however, a trademark registration comes with significant responsibilities.

    The ® Symbol
    Upon registration, you should begin to transition the "notice" symbol near your trademark from "TM" or "SM" to the symbol. The use of the symbol puts the public on notice that you have successfully federally registered your trademark with the United States Patent and Trademark Office. Consistent use of the symbol can serve as a strong deterrent to competitors or would-be competitors from using a mark that is the same or confusingly similar to your registered trademark.

    Use It, Or You Could Lose It
    Continue to use your trademark in commerce in connection with the goods and/or services listed on the trademark certificate. If you stop using the trademark in connection with any or all of the goods and/or services, you should contact your trademark attorney immediately. Depending upon the circumstances of your decision not to continue to use your trademark, certain filings may need to be made with the USPTO to preserve your claim of ownership of the trademark. Otherwise, you may risk abandonment of your mark, and/or lack the necessary qualifications to file a Declaration of Incontestability after five years of registration and continuous use (or some period of excusable nonuse) in commerce.

    Be On The Lookout
    Possible Infringement
    Pay attention to the marks used by others in association with their goods and services. You should be conscious of the marketing activities of others and keep an eye out for potentially infringing marks used by others that may be likely to cause confusion or otherwise deceive your customers. Infringement or potential infringement can take many forms; it may appear on product packaging; on product tags or labels; in print, web, radio or television advertising materials; in internet domain names, or in nearly any other commercial context. If you encounter a trademark that you suspect could cause confusion among your customers as to the source of the products or services offered, ask your trademark attorney to evaluate the situation so that appropriate action may be taken.

    Keep Your Trademark Registration Alive
    Watch your trademark registration, or have your trademark attorney do it for you. If you do not properly monitor your trademark registration, you may inadvertently miss a required post-registration filing and abandon your registration. Generally, post-registration filings include a Declaration of Continued Use (and a Declaration of Incontestability, if applicable) between the fifth and sixth years of registration, and a Declaration of Continued Use and an Application for Renewal between the ninth and tenth years of registration.

    Enforce Your Rights
    Don’t sleep on your rights. Now that you’ve been granted the exclusive right to use your trademark in commerce in association with the goods and/or services listed in the registration, exercise and enjoy your rights. If you fail to police your trademark and allow others to use it (or a confusingly similar mark) in conjunction with their goods and/or services, you could be deemed to have abandoned your exclusive right to use your mark. You don’t have to be litigious to maintain your rights, but your trademark attorney will be able to assist you in deciding what enforcement strategy would be right for you, under the circumstances.