In Part 4 of Trademark Basis we explore what happens after you secure a trademark registration. Feel free to review Part 1 “Selecting a Trademark,” Part 2 From Selection to Application,” and Part 3, “Intent to Use.”
Q: When should I use the ™ symbol or the ® symbol?
A: After federal registration the mark should be identified with the ® symbol. Do not use the ® prior to issuance of the Federal Registration.
While the federal application is pending ( from one to two years), the trademark should be identified with the TM symbol. Use the mark with the TM on the actual product to which the mark applies, if possible, and on product labeling and packaging, and also in brochures, catalogs, advertisements, letterhead, business cards, and signage, as appropriate.
When using a word mark, or the word portion of a combination mark (word plus design), in a sentence, distinguish it from surrounding text by using all capitals and quotes.
Q: Does my trademark registration expire once a registration issues from the U.S. Patent & Trademark Office?
A: A trademark registration is valid for 10 years after the date of registration, provided that a section 8 (and possibly section 15) affidavit is filed with the USPTO in between the 5th and 6th years after registration, further validating that the mark is in use at this time. Failure to file the section 8 affidavit between the 5th and 6th years of registration will result in cancellation of the trademark application before the 10 year expiration period. Between the 9th and 10th year after registration, a renewal application is required to maintain the mark. Thereafter, the renewal must be filed every 10 years.
Q: I forgot to file my section 8 & 15 affidavit or section 8 & 9 renewal within the 1 year window before expiration. Can I still reinstate my trademark?
A: There is a six month grace period after the 6th year of registration or after the 10th year of registration to file these documents with the USPTO, for an additional fee. Once outside the grace period, a new trademark application is required.
Q: My trademark is still in use, but I have sold it to another company or changed my company name. Do I need to do anything with the trademark office?
A: Yes, you may need to file an assignment or change of ownership name document with the USPTO. Visit the assignments section of the USPTO website for additional information.
If you are ready to learn more about trademark attorney Tamera Bennett’s 5 Steps to Filing a Trademark Application, click here.