L.A. TECH & MEDIA LAW FIRM – Intellectual Property & Technology Law

Maximizing Your Trademark Investment: Best Practices for Post-Registration Success

Maximizing Your Trademark Investment: Best Practices for Post-Registration Success
For entrepreneurs and technology startups, trademarks are invaluable assets. Successfully registering a trademark is a significant milestone for any business because it comes with many important legal advantages. However, the journey doesn’t end with the registration certificate. Rather, obtaining federal registration for your trademark is just the beginning of a new chapter filled with responsibilities, obligations, and opportunities.  In this blog, we’ll be exploring common questions and concerns that arise once your trademark is officially registered with the United States Patent and Trademark Office (USPTO). From understanding maintenance requirements to knowing and enforcing your rights, we’ll provide insights, practical tips, and guidance to help you navigate the post-registration landscape with confidence and get the most out of your trademark investment.

What are my rights as a trademark owner once my registration is issued?

As a trademark owner, once your registration is issued, you enjoy certain legal benefits and advantages with respect to your registered trademark, although the exact scope of your rights may vary. Here are some key advantages of trademark registration on the Principal Register and/or the Supplemental Register:

Comprehensive U.S. Protection

A trademark registered on the Principal Register enjoys nationwide, exclusive rights to use the mark for the goods or services specified in the registration, and is presumed to be valid and enforceable. The legal presumption of exclusive nationwide rights means that you can prevent others from using a similar mark for similar goods or services, thereby strengthening your brand’s identity and market presence. Owning a principal registration, therefore, makes it easier to enforce your trademark rights in court and can be a powerful tool in protecting your brand against potential infringement and counterfeiting.  Registration on the Supplemental Register does not confer the same level of exclusive rights as a mark registered on the Principal Register but still offers legal protections, even if slightly limited. For instance, regardless of the register, owning a registration establishes your priority of use in connection with the registered mark and allows you to be cited by a USPTO examining attorney as the basis for denying a later-filed application to register a confusingly similar mark for related goods or services. 

Use of the ® Symbol

Once your trademark is registered on either register, you are entitled to use the ® symbol, which signifies that your mark is a registered trademark. This can help establish your brand’s credibility and professionalism, and deter others from using a similar mark.

Enhanced Remedies and Damages

Registration on the Principal Register allows trademark owners to seek enhanced remedies and damages in cases of trademark infringement and also bring claims of unfair competition. This means the potential for monetary damages, recovery of profits, and statutory damages, which can serve as a strong deterrent against unauthorized use of your trademark.  Trademarks registered on the Supplemental Register do not enjoy the same access to enhanced remedies but they can still serve as evidence for establishing prior rights and potential damages in an action for trademark infringement.

Public Notice and Credibility

Registration of your trademark on either register makes your trademark information publicly available in the USPTO’s trademark database, providing notice to others of your claimed rights and enhancing your brand’s credibility by showing that you have taken steps to protect your trademark through formal registration.  Registration on the Supplemental Register does not provide the same level of public notice, as those marks are not published in the Trademark Official Gazette, and may not carry the same weight in enforcing trademark rights but it can still potentially deter third parties from infringement or adopting a similar mark. 

Customs Enforcement

Trademark registration on both the Principal Register and the Supplemental Register allows you to record your trademark with the U.S. Customs and Border Protection (CBP). This can help prevent the importation of counterfeit goods into the U.S. and protect against unauthorized uses of your brand.

International Protection

Registrations on either register give trademark owners the ability to seek registration of their trademarks in foreign countries that offer reciprocal trademark protection. This can be beneficial if you plan to expand your business internationally and seek trademark protection in other countries.

Business Opportunities

Trademark registration on both the Principal Register and the Supplemental Register can open up business opportunities, such as licensing, franchising, and expansion into new markets. Whether on the Principal or Supplemental Register, registered trademarks are valuable assets that can enhance your brand’s reputation and create lucrative revenue streams.

Simplified Domain Name Dispute Resolution

Trademark registration on both the Principal Register and the Supplemental Register can simplify the resolution of domain name disputes through the Uniform Domain Name Dispute Resolution Policy (UDRP), providing trademark owners with additional protection against cybersquatting and domain name hijacking. It is important to note that your rights as a trademark owner are subject to certain limitations and exceptions. For example, your trademark rights may not extend to uses that are considered ‘fair use’ or that do not create a likelihood of confusion with your trademark. Additionally, your trademark rights may be challenged or invalidated if your trademark is found to be descriptive, generic, or otherwise ineligible for protection.

How long does a trademark registration last? 

A trademark registration in the United States initially lasts for 10 years from the date of registration. However, the registration can be renewed indefinitely as long as the mark is still being used in commerce and appropriate steps are taken to comply with statutory maintenance requirements.  A trademark registration first requires maintenance action between the fifth and sixth years after it is issued.  In most cases, this involves filing a Declaration of Use with the USPTO. A Declaration of Use must include a sworn statement that the mark is being used in commerce in connection with all of the registered goods and/or services and new specimens showing how the mark is being used for each class of goods or services in the registration.  If the registered mark is not currently being used in connection with all of the registered goods and services at the first maintenance interval, it may still be possible to preserve the registration by filing a Section 8 Declaration of Excusable Nonuse, provided that the nonuse is due to special circumstances and is not the result of any intention to abandon the mark.  Subsequent renewal steps must be taken every ten years thereafter to keep the registration active.  Failure to timely file any of the required maintenance paperwork can result in cancellation of the registration. It’s important for trademark owners to stay vigilant and aware of maintenance timelines so that they can take appropriate action to preserve their trademark registrations.   

Can I make changes to my trademark registration after it has been issued?

Yes, it is possible to make changes to your trademark registration after it has been issued. However, the type of changes that can be made, and the process for making those changes, may depend on the specific laws and regulations governing trademarks in your jurisdiction. In general, some of the changes that can be made to a trademark registration include:
  • Changing the owner or applicant of the trademark
  • Changing the goods or services associated with the trademark
  • Adding or removing a trademark design element
  • Correcting errors in the registration
  To make these changes, you will typically need to file a formal request or petition with the government agency responsible for trademarks in your jurisdiction (e.g., the USPTO). The process for making changes can vary depending on the type of change and the jurisdiction. It is important to note that any changes made to a trademark registration may affect the enforceability and validity of the trademark. Therefore, it is highly recommended that you consult with a qualified intellectual property lawyer before making any changes to your trademark registration.

How do I monitor and protect my trademark after registration?

Trademark owners have the responsibility to actively monitor and protect their trademark rights.  Failure to enforce your trademark rights against infringers may result in dilution, genericness, or other loss of substantive trademark rights.  Best practices for trademark monitoring range from the simple “Google Alert” tool to robust commercial monitoring services used by brands such as Rolex® and Tiffanys®. After monitoring, through any source, potentially infringing activity should be forwarded to legal counsel for further analysis.  Understanding the ongoing obligations and best practices for trademark protection is crucial to safeguarding trademark rights. To further discuss trademark monitoring protocol and best practices, it is advisable to seek consultation from an experienced trademark attorney.

How can I enforce my trademark rights against infringers?

As the owner of a federally-registered trademark, you can take action to preclude unauthorized use of your mark and/or third-party use of trademarks or other monikers that are confusingly similar to your mark. Here are some steps you can take to enforce your trademark rights: Monitor for infringement: Regularly monitor the market for unauthorized use of your trademark. This can be done by conducting online searches, monitoring social media, attending trade shows, and hiring investigators. Send a cease-and-desist letter: If you identify an infringer, send a cease-and-desist letter demanding that they stop using your trademark. The letter should include evidence of your trademark rights and the infringing activity, and it should demand that the infringer stop using your trademark immediately. Consider alternative dispute resolution: If the infringer does not comply with your demand(s), consider alternative dispute resolution methods such as mediation or arbitration. These methods can be faster and less expensive than going to court. File a lawsuit: If the infringer continues to use your trademark, you may need to file a lawsuit to enforce your trademark rights. This may involve seeking injunctive relief, damages, and other remedies. It is important to note that enforcing your trademark rights can be a complex and time-consuming process. It is highly recommended that you consult with a qualified intellectual property lawyer to guide you through the process and help you make informed decisions about how to proceed.

What should I do if I receive a cease-and-desist letter or a formal trademark infringement complaint?

If you receive a cease-and-desist letter or a trademark infringement complaint, there are several steps you should take: Review the allegations: Carefully review the allegations in the letter or complaint to understand the specific claims of infringement against you. Take note of the alleged infringing activity and the trademarks at issue. Contact an attorney: It is crucial to contact an experienced intellectual property attorney as soon as possible. An attorney can help you evaluate the allegations against you and the strength of the case. They can also help you formulate a response and develop a strategy for resolving the dispute. Gather evidence: Collect and preserve all evidence related to your use of the allegedly infringing trademark. This may include product packaging, marketing materials, and any other documentation that demonstrates your use of the mark. Respond to the letter or complaint: Depending on the circumstances, you may need to respond to the cease-and-desist letter or file an answer to the complaint. Your attorney can help you prepare a response that addresses the allegations against you and sets forth your defenses. Consider settlement: In some cases, it may be possible to resolve the dispute through negotiation or settlement. Your attorney can help you evaluate the pros and cons of settlement and negotiate a favorable resolution on your behalf. It is important to act quickly and seek the guidance of an experienced intellectual property attorney when you receive a cease-and-desist letter or trademark infringement lawsuit. Failure to respond or take appropriate action can have serious legal consequences.

Experienced Trademark Attorney for Registration Maintenance and Brand Protection

Protecting a trademark is an ongoing process that requires diligence and proactive measures. It’s essential to stay informed about the latest legal requirements, best practices, and strategies to effectively safeguard your brand. Entrepreneurs, startups, and technology companies who are navigating the trademark application and registration process through the USPTO are well advised to consult with an experienced trademark attorney in Los Angeles, California to discuss federal trademark protection strategies. An experienced trademark lawyer in Los Angeles, Beverly Hills, Santa Monica, Hollywood, or other California city will be able to consult entrepreneurs, technology startups, and small businesses on nationwide brand protection issues and trademark registration strategy.
David N. Sharifi, Esq.
David N. Sharifi, Esq.

David N. Sharifi, Esq. is a Los Angeles based intellectual property attorney and technology startup consultant with focuses in entertainment law, emerging technologies, trademark protection, and “the internet of things”. David was recognized as one of the Top 30 Most Influential Attorneys in Digital Media and E-Commerce Law by the Los Angeles Business Journal.
Office: Ph: 310-751-0181; david@latml.com.

Disclaimer: The content above is a discussion of legal issues and general information; it does not constitute legal advice and should not be used as such without seeking professional legal counsel. Reading the content above does not create an attorney-client relationship. All trademarks are the property of L.A. Tech & Media Law Firm or their respective owners. Copyright 2019. All rights reserved.

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