After you receive your trademark registration, you might wonder what the next steps are and what do I need to do to maintain the registration.
Within approximately two (2) months after you have filed your Statement of Use and it is approved, the United States Patent Office will issue a registration. You must file specific maintenance documents and/or make payments to keep this registration “live” or it will result in cancellation and/or expiration of the registration. If your registration is cancelled or expired, you must file a brand new application and start the entire process over again. Also, if your trademark was previously registered and approved, this does not guarantee registration again when you submit a new application.
If your trademark is registered, you should monitor the status of your registration through the Trademark Status and Document Retrieval (TSDR) yearly. You will have to renew your mark between five and six years after its registration date, followed by additional 10 year renewal periods. Make sure you check the status of your registration, especially after you have made any filings required to maintain your registration.
It is very important to ensure that all information that you file is accurate. For example, if the goods or services that are currently identified in the registration are not being used, they should be deleted from the registration, when filings are submitted. If you do not delete these, the registration could be challenged because it may contain goods and services that are not in use.
After your mark has been on the Principal Register for five years you can also file a Section 15 declaration of incontestability. This just means that your trademark will be incontestable. You don’t want to forget to file for incontestability because this will ensure you have additional protection in the event of a dispute.
It is also very critical, as it becomes necessary to update your correspondence address and update the owner address. Changing the owner’s address will not change the correspondence address or vice versa. Usually, old or outdated information in the USPTO database is caused by a registrant failing to notify the Office of a change in ownership of a trademark because the business changed its name, was sold, or for some other reason. You can fix the discrepancy by filing an Assignment.
If you receive registration, it is your responsibility for enforcing your rights because the USPTO does not “police” the use of trademarks. While the USPTO does attempt to ensure that no other party receives a trademark registration for an identical or similar mark, you, as the owner of the registration, are responsible for bringing any legal action to stop a party from infringement. If you suspect that a registered mark is being infringed upon, you can record the registered mark with the U.S. Customs and Border Protection.
It is always important to hire an attorney to guide you through the whole process of registering for a trademark.
