Obtaining a Certificate of Registration for your trademark can signify a “job well done” and create a feeling of satisfaction. However, the work is not done. After your trademark is registered, like any other business asset, your trademark needs maintenance, nurturing, and protection. Experienced trademark attorneys — like those at Revision Legal — can help with these tasks. Call us at 231-714-0100 or 855-473-8474. If you are searching for “the best trademark attorneys,” call us. Here are the top mistakes to avoid after you have successfully registered your trademark.

1. Failing to use your trademark.

To be valid and to maintain your trademark, the trademark must be used in commerce. That is, the trademark must be placed on products, packaging, advertising, websites, letterhead, etc. Failure to actually use your trademark will lead to loss of registration and any legal protection that is provided by trademark law.

2. Failing to use your trademark consistently.

It is also potentially fatal to your trademark rights to use your trademark infrequently and inconsistently. In simple terms, you must use the trademark as it was registered. In other words, you cannot use something that looks similar to your trademark; you must use your trademark as registered. For example, for a design logo, you cannot remove an element, add an element, change the color scheme, etc.

3. Failing to police against infringement of your trademark.

If others attempt to use your registered trademark or attempt to use a confusingly similar trademark, you must take practical and legal steps to protect your trademark. This means sending a demand letter and starting litigation — if necessary — to prevent infringement. Even if you do not start litigation, it is still important to take active steps — and document those steps — because, at some point, you may be faced with proving that you did not abandon your trademark rights. This can happen, for example, if you let your trademark become a common generic name for some product or service among the consuming public. This is called trademark genericide. The trademark ZIPPER is a good example. It was registered, but the owners failed to police its use. Eventually, zipper just became a commonly used word for a type of fastening device. GOOGLE is in danger of this, and already, some efforts have been made to claim that GOOGLE is no longer a trademark. However, the owners of the GOOGLE trademark have been very careful to defend their trademark and have plenty of evidence to prove that.

4. Failing to maintain your registration status and pay renewal fees

Between the fifth and sixth year anniversary of your trademark registration, you must renew your registration and prove that you have been using your trademark in commerce. There are also new fees to be paid. Then, about every 10 years, you have to renew again. Failure to maintain and renew your registration status will cause the loss of your registration.

Contact the Trademark Attorneys at Revision Legal For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

4. Failing to File Required Post-Registration Maintenance Documents

Federal trademark registration requires active maintenance or the registration will lapse. Under 15 U.S.C. § 1058, trademark owners must file a Declaration of Continued Use (Section 8 Declaration) between the fifth and sixth year after registration and then again between the ninth and tenth year — and every ten years thereafter. Additionally, most trademark owners should file a Section 15 Declaration of Incontestability along with the Section 8 Declaration at the five-year mark, which provides substantially enhanced legal protections.

Missing these deadlines is not easily curable. A trademark registration that lapses for failure to file Section 8 maintenance documents is cancelled. If your registration lapses, you must file a new application and restart the registration process — without the benefit of your original filing date as a priority date. This can be catastrophic if a competitor has filed a similar mark in the interim period.

5. Failing to Monitor and Act Against Cybersquatters

A registered trademark provides rights in commerce but does not automatically extend to the online world. Domain names, social media handles, and online marketplaces are separate battlegrounds. Cybersquatters — parties who register domain names that are confusingly similar to famous or registered trademarks with bad faith intent — can harm your brand’s online presence and divert customers.

Trademark owners have legal tools to address cybersquatting. The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), provides a federal cause of action against parties who register, traffic in, or use a domain name identical or confusingly similar to a distinctive or famous mark with bad faith intent. The Uniform Domain Name Dispute Resolution Policy (UDRP) provides an administrative procedure before arbitration panels to reclaim domain names from cybersquatters, often without full litigation. Trademark registration strengthens both ACPA claims and UDRP proceedings significantly.

6. Licensing Your Trademark Without Adequate Quality Control Provisions

Licensing a trademark can generate revenue and expand your brand’s reach. But trademark licenses that lack adequate quality control provisions can result in “naked licensing,” which is a legal ground for finding that a trademark has been abandoned. Courts have held that a trademark owner who licenses the mark without retaining control over the nature and quality of the goods or services sold under the mark loses trademark rights entirely. See Barcamerica Int’l USA Trust v. Tyfield Importers, Inc., 289 F.3d 589 (9th Cir. 2002).

Any trademark license agreement must include provisions requiring the licensee to maintain quality standards consistent with the licensor’s specifications, along with the licensor’s right to inspect and enforce those standards. These provisions are the legal mechanism that preserves the validity of your trademark through the licensing relationship.

Trademark registration is the beginning, not the end, of trademark ownership. The attorneys at Revision Legal help registered trademark owners understand their ongoing obligations and enforce their rights. Contact us at 231-714-0100 or 855-473-8474 for a post-registration trademark audit.