Trademark Registration Guide

Congrats on your new trademark registration!

This guide covers your new rights, expansion options, upkeep, and how to enforce your trademark rights.

  1. Your new rights

  • Exclusive Ownership - You are now the exclusive owner of your trademark in the United States in connection with the offerings that you filed under. This means that if anyone else is using a business name, logo, slogan, product name, or other trademark that is too confusingly similar to your trademark in connection with similar offerings, you may have grounds to stop them. If you think someone is infringing on your trademark, you can contact me to assess the situation to confirm the best next steps.

  • Published Documentation - Your rights to the trademark are publicly listed on the USPTO database. So, when businesses are researching trademarks, they are more likely to see your rights which can help stop someone from using your name before problems begin.

  • You can use the ® Symbol - You can now use the ® symbol next to you trademark as you have it registered. For example, if you registered a trademark for “Wild Abundance”, you can now present that as Wild Abundance® in any place where you use that name. This is not required in every usage, but it helps put the public on notice of your trademark rights and can help prevent infringement.

2. Expansion

  • Add Classes of Goods/Services - Your trademark rights are anchored in connection with the classes of goods and/or services that we filed under. For example, if you filed your trademark in connection with wellness educational services, coaching, and programs only, you have rights to the trademark in the class, but you may not have rights to the trademark in connection with other offerings, like apparel or downloadable apps. If you want to expand your protection into new classes of offerings, we can coordinate on adding those anytime.

  • International Expansion - If you want to expand your trademark protection into other international countries, your U.S. registration can help expedite that process. Generally, international registrations are done on a country-by-country basis. For example, the EU, Canada, Mexico, and China would likely all be separate registrations. Let me know where you want to expand and we can coordinate.

3. Upkeep

  • Renewals - Your trademark will need to be renewed from time-to-time. Your first trademark renewal will be due between the 5th and 6th year after the date of your registration. So, in 5 years from your registration date, you will be eligible to renew your trademark registration for 5 more years, and the deadline to do that is 6 years after your registration date. After that, additional trademark renewals will be due every 5-10 years depending how long you continue to use your trademark and wish to keep it registered. We’ll let you know when renewal deadlines are coming up.

  • Continued Use - In order to maintain rights to your trademark, you generally need to keep using the trademark publicly in connection with your associated offerings. This means that those offerings should be publicly available for sale in connection with the trademark, at least sometimes. This doesn’t need to be constant. You can have active seasons and quiet seasons. But if you shut down all of your public usage of the trademark for multiple years, the trademark could become abandoned in which case someone else could potentially seize it.

  • Permission Oversight - You might want to give other people permission to use your trademark sometimes. Like, you might license your trademark to a brand partner or sponsor to help market certain offerings. Just be careful that in any agreement where you given permission to someone else to use your trademark that you have oversight and quality control over how the trademark is used. Otherwise it can be considered a “naked license” where you have given someone else full control of your trademark, which could weaken or abandon your rights to the trademark.

  • Duty to Police - You have a duty to enforce your trademark rights. This means that if you see other people infringing on your trademark and don’t do anything about it, eventually your trademark rights may be considered abandoned because you aren’t enforcing them. This won’t happen over night, but you should check with me or your legal counsel if you think infringement is happening to confirm the best next steps.

  • Automatic Monitoring - To help streamline policing, I can setup automatic brand monitoring that will send you monthly reports of any potential infringement on social media, web domains, or the USPTO database. Let me know and we can coordinate.


4. Enforcing your rights

If you think someone else is infringing on your trademark, you can contact me to confirm the best next steps. This might include sending a cease and desist letter, a trademark opposition filing, or litigation depending on the situation. We don’t recommend DIY trademark enforcement as that can lead to missteps that may put you in a bad spot.

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