After Registration

Features and Considerations:

• Monitoring and Enforcement: Continuously monitor the market for any unauthorized use of your trademark. Promptly address potential infringements to prevent dilution of your brand’s value and take legal action if necessary.
• Renewal: Be mindful of the renewal deadlines. In many jurisdictions, trademarks need to be renewed every 10 years, with timely renewals essential to maintain registration validity.
• Use Requirement: Ensure your trademark is actively used in commerce to avoid cancellation for non-use. Documenting use can defend against legal challenges or cancellation requests.
• International Protection: If expanding globally, consider registering your trademark in other countries. Utilizing international systems like the Madrid Protocol can streamline this process.
• Licensing and Franchising: Leverage your trademark by licensing it to others or through franchising, ensuring your agreements explicitly protect your rights and outline usage guidelines.
• Record Keeping: Maintain thorough records of your trademark application, registration, renewal documents, and any legal actions or licensing agreements. This documentation can be invaluable in legal disputes.Use the trademark in commerce and file necessary documents to keep the registration active.
• Utilize the ® symbol to signal federal registration.

Examples:

1. Filing a Declaration of Use and/or Excusable Nonuse under section 8 between the fifth and sixth years with the USPTO and renewing the trademark registration every 10 years in both Canada and the United States.
2. If your trademark goods or services have not been classified under the Nice Classification at the time of renewal, there might be specific procedures regarding the renewal fees for additional classes of goods or services​​​​​​​​.

Why This Matters:

Maintaining trademark rights protects the brand’s identity and market position. It prevents others from using similar marks that could confuse customers and dilute the brand’s reputation. After successful registration, it’s important to use the trademark consistently and monitor for any unauthorized use. Trademark owners should file the necessary documents to maintain the registration, including declarations of use and renewals. They should also ensure their trademark does not become generic through common use as a noun or verb, which can lead to loss of rights.

Call to Action:

1. Set Up Monitoring: Implement a system to monitor the use of your trademark in the marketplace.
2. Plan for Renewals: Mark your calendar for renewal deadlines and prepare the necessary documents well in advance.
3. Review Licensing Opportunities: Evaluate potential licensing agreements or partnerships to extend the reach and value of your trademark.
4. Consider International Registration: If your business operates or plans to expand overseas, investigate registering your trademark in those jurisdictions.

External Resources:

• Registration and renewal of trademarks (CIPO): https://ised-isde.canada.ca/site/canadian-intellectual-property-office/en/trademarks/registration-and-renewal-trademarks
  • Renewals and Partial Renewals
  • Considerations regarding Trademark confusion
• Keeping your registration alive (USPTO): https://www.uspto.gov/trademarks/maintain/keeping-your-registration-alive

Advanced Topics:

• Trademark Surveillance Services: Explore professional services that offer comprehensive monitoring of your trademark across various platforms and jurisdictions.
• Handling Infringement Internationally: Learn about the nuances of addressing trademark infringement in different countries, including legal actions and negotiations.
• Brand Valuation: Understand methods to assess the financial value of your trademark as part of your business assets, useful for investment, sale, or licensing decisions.
• Strategies for handling trademark dilution and genericization.