Registering a trademark is a critical milestone, but it’s not the end of the road. For attorneys practicing trademark law, staying connected with clients after registration is just as important as securing the mark in the first place. If trademark renewals and post-registration use aren’t managed properly, your clients’ hard-earned rights can slip away.
Here’s why keeping tabs on trademark use post-registration is essential—and how you can protect your clients from losing their marks.
The Trademark Renewal Reality: Trademarks Can Be Lost
Trademarks are powerful assets, but they’re not permanent unless you use them and file the proper maintenance documents. In the U.S., trademarks must be renewed periodically:
- First Renewal: Between the 5th and 6th year after registration (via a Section 8 Declaration of Use).
- Second Renewal: Between the 9th and 10th year after registration (via a Combined Section 8 and 9 Declaration).
- Subsequent Renewals: Every 10 years after that.
If your client misses these deadlines, the mark will be canceled. Once that happens, reviving their rights can be costly – or worse, lost forever.
Why Staying Connected with Clients Matters
Many clients may not fully grasp the importance of ongoing trademark maintenance. They might assume their mark is registered forever. This is where proactive trademark attorneys play a crucial role.
- Catching Changes in Use Early
Trademark rights depend on consistent and proper use. If your client’s use changes (e.g., new logo design, expanded goods/services), they may need a new trademark application to reflect the new use. By staying in touch, you can identify these changes early and advise accordingly.
- Avoiding Missed Deadlines
Renewal deadlines can sneak up on clients, especially as years go by. A simple reminder in your docketing system can help them avoid the costly mistake of letting their mark lapse and be a source of revenue for you!
- Monitoring for Potential Challenges
Clients may not realize their mark is vulnerable to cancellation if they stop using it, or if others are infringing on it. Regular check-ins help you spot potential threats before they become major issues.
- Reinforcing the Value of Their Brand
By maintaining contact, you remind clients that their brand is a living asset that has value – it’s not just a piece of paper from the USPTO. Regular check-ins also reinforces the value of your services and positions you as a trusted advisor.
Tips for Trademark Attorneys: How to Stay in Touch
- Implement a Trademark Renewal Reminder System
Use docketing software or calendars to track deadlines for each client’s trademarks. Send reminders well in advance of renewal windows, with clear instructions (and fees) on what’s required.
- Schedule Annual Check-Ins
Offer annual “trademark health check” meetings to review how clients are using their marks. This helps catch any changes in use or potential vulnerabilities.
- Educate Clients on Proper Use
Provide resources or quick guides on maintaining proper trademark use. Topics could include:
- How to use the ® symbol correctly
- What constitutes acceptable changes to a mark
- How to avoid genericide (e.g., improper use of their mark in marketing)
- Offer Maintenance Packages
Consider offering post-registration services as part of a maintenance package. This could include renewals, monitoring, and periodic annual consultations.
- Keep Communication Open
Send periodic updates, blog posts, or newsletters about trademark law changes and best practices. This keeps you top-of-mind and positions you as a proactive expert.
Protecting Your Clients’ Long-Term Brand Value
A registered trademark is just the beginning of brand protection. By staying involved with clients after registration, you safeguard their rights and demonstrate your commitment to their business success. Renewals and proper trademark use are more than administrative tasks—they’re essential to protecting the value your clients have worked so hard to build.
Ready to Build a System for Trademark Renewals?
Keeping trademarks alive is a long game, and proactive attorneys win it. If you’d like to learn more, Trademarkabilities® can help. Through our Trademarkabilities® Masterclass, we offer comprehensive, step-by-step training designed to teach attorneys and legal professionals the best practices for how to maintain and renew trademark registrations and practical advice for how to add value to your clients throughout the life of the trademark lifecycle. To learn more, check out our website here.
Stacey C. Kalamaras is the founder and lead instructor of Trademarkabilities ®, an online trademark training academy designed to help lawyers learn and practice trademark law. Through clear, step-by-step lessons and supportive group mentoring, we’ll give you the tools to confidently navigate the trademark application process at the USPTO and build a thriving practice in a fast-growing field. Stacey started Trademarkabilities to share her passion teaching the law with the next generation of lawyers and help them become practice ready lawyers. Contact us at: hello@trademarkabilities.com .
Stacey is also a seasoned trademark attorney and currently works in-house as Senior Counsel for a multi-national candy company. She previously owned her own solo trademark practice, which she scaled and sold. She has been recognized by her peers for her outstanding knowledge and service in intellectual property law.