Key Takeaways

  • Trademark and IP registration does not end with USPTO approval; post-registration maintenance is required.
  • Owners must file maintenance documents such as the Section 8 Declaration of Use, Section 9 Renewal, and sometimes Section 15 Declaration of Incontestability.
  • Failure to comply with deadlines can cause cancellation of trademark rights.
  • Monitoring and enforcing a trademark is the owner’s responsibility, including taking legal action against infringers if necessary.
  • Keeping accurate records of trademark use and staying aware of litigation risks are vital to protect your brand.

The post registration procedure of trademark refers to the process of keeping a trademark in good standing even after it has been registered and approved by the United State Patent and Trademark Office (USPTO).

How to Apply for a Trademark

There are many important steps to the trademarking process. Just because a trademark has been registered, this doesn't mean the process is complete. After registering a trademark, there are certain steps to follow in order to keep your intellectual property (IP) protected under the trademark moving forward.

Once you apply for a trademark with the USPTO, an attorney will take over examining your application. They will likely respond to your application with some questions and clarifications. If these inquiries are missed or not responded to in a timely manner, the trademark protection may never take effect.

Don't miss the necessary steps to obtaining good protection for your IP. You'll need to:

  • Search for pre-existing trademarks and applications still pending
  • File the trademark application
  • Keep up with the application during the process and be sure to answer follow-up inquiries

Post Registration Maintenance Requirements

Once your trademark is registered, your responsibilities do not stop there. To keep a trademark valid, the USPTO requires owners to file specific maintenance documents at regular intervals:

  • Section 8 Declaration of Use (between years 5–6): Confirms that the mark is still in use in commerce. Failure to file results in cancellation.
  • Section 15 Declaration of Incontestability (optional, after 5 years): Strengthens your rights by making the trademark incontestable, which limits certain legal challenges.
  • Section 9 Renewal (every 10 years): Must be filed with or after the 9th year, and then every 10 years, to maintain registration.

Missing these filings can cause your trademark to be cancelled, leaving your intellectual property unprotected.

Trademark and Application Search

Before applying for a trademark, it's a good idea to know whether your desired name is already protected. You'll want to search current trademarks as well as current applications for trademarks in case they are approved while you're working through your application process. Obviously, you cannot trademark a name that is already protected or about to be protected. This search can save a lot of time and hassle.

You can perform a trademark search yourself or go through a professional. Professionals may have access to more trademark databases than the average person, which can widen your scope.

Searching the USPTO for current trademarks and those in the application process is quite easy. Simply visit their online database and start your search.

Using a professional can help make sure that nothing is missed by searching more than just the USPTO database. This type of search will cover more ground than the USPTO will cover in deciding whether your application for a trademark with them is possible. The necessity of a broader search depends on the type of coverage you are seeking.

It is always a good idea to perform a general search online when deciding on a name for a company or a trademark. Even if your desired name is being used but hasn't been officially trademarked, it's better to try to find a completely unique name. Consider the fact that other names that are similar to your desired name that are in use at the time you file a trademark will be allowed to continue to be used. This could render your efforts somewhat useless.

Domain names are also an important part of the modern business world. In addition to searching current trademarks and applications, it's also good to search available domain names. This can also be done online.

Monitoring and Enforcing Trademark Rights

Registration provides legal recognition, but trademark owners must actively monitor and enforce their rights. The USPTO does not police infringement; it is the owner’s responsibility to:

  • Watch for competitors using similar marks in the marketplace.
  • Set up monitoring services or perform regular searches to detect possible infringement.
  • Take prompt action—often starting with a cease-and-desist letter, followed by negotiation or litigation if necessary.

Trademark litigation is sometimes unavoidable. Common claims include trademark infringement, dilution, and unfair competition. Courts may grant injunctions, damages, and in some cases attorneys’ fees if infringement is proven.

Principle Register vs Supplemental Register

It usually takes about a year to file a federal trademark, providing you don't run into any snags in the process. If the examining attorney for the trademark comes across any discrepancies, the process could take longer.

There are two types of registers used for federal trademarks:

  • Principle Register
  • Supplemental Register

The Principle Register hosts trademarks that offer stronger protection against infringement because they include more possible uses of the name you hope to protect. This can include second meanings, suggestions of the trademark, arbitrary uses, and more. Basically, if you want all of your bases covered, you'll want to get your name register on the Principle Register.

The Supplemental Register is offered to names that aren't approved by the USPTO to be on the Principle Register. This sort of back-up register provides a federal trademark, but without the extra bells and whistles protection of the Principle Register. If your name is put on the Supplemental Register, you'll still officially have a federal trademark, and you can use the recognized trademark symbol legally.

If you hope to have the power to take legal action against any trademark infringement on your chosen name, you'll want to be on the Principal Register. Getting a name on the stronger register can be tricky, so consider hiring an IP lawyer for assistance.

Practical Tips for Maintaining Trademark Protection

To keep your trademark strong and enforceable, consider these best practices:

  • Keep records of use: Maintain evidence such as labels, advertising, or website screenshots to prove continuous use.
  • Update ownership changes: If your company changes names, merges, or transfers ownership, record the change with the USPTO to avoid disputes.
  • Expand protection internationally: If you plan to operate globally, explore foreign trademark filings under treaties such as the Madrid Protocol.
  • Work with professionals: Trademark attorneys can help track deadlines, prepare filings, and manage enforcement strategies.

By treating post-registration steps as an ongoing process, businesses ensure that trademark and IP registration continues to safeguard their brand assets.

Frequently Asked Questions

  1. What happens if I miss a Section 8 or Section 9 filing?
    Your trademark registration will be cancelled, and you’ll lose the exclusive rights granted by the USPTO.
  2. Is filing a Section 15 Declaration required?
    No, but it is highly recommended. It makes your trademark “incontestable,” reducing the grounds on which others can challenge it.
  3. Who enforces trademark rights after registration?
    The USPTO does not enforce trademarks. Owners must monitor the market and take legal action against infringers.
  4. How long does a trademark last?
    A trademark can last indefinitely if maintenance filings are made on time and the mark continues to be used in commerce.
  5. Should I register my trademark internationally?
    Yes, if you plan to expand abroad. International treaties like the Madrid Protocol allow you to protect your brand in multiple countries with one application.

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