Foundations of IP Strategy

IS THERE ANYTHING MORE YOU HAVE TO DO AFTER YOU HAVE REGISTERED YOUR TRADEMARK?

POLICING YOUR MARK

• With trademarks, “If you don’t use it, you lose it.” Therefore, you have to maintain the integrity of your trademark, which requires ongoing management and watchful oversight. Not only do you have to use your trademark but you have to prevent others from entering the market under the same or a confusing brand. Similarly, if you license your trademark to others, you need to maintain certain standards for how the licensee uses the mark.

POLICING YOUR TRADEMARK THEREFORE ALSO INCLUDEs:

• Checking domain name registrations for infringements as well as deciding whether to register any domain names yourself.

  A domain name is like an internet phone number for your business. You should consider registering at least one domain name that incorporates your trademark under one or more of the more popular top-level domains such as .com, .net and .org. 

  Domain names are related to trademarks in the sense that you can use your trademark as your domain name and ensure that your branding strategy incorporates both methods of generating goodwill. You can also prevent others from using the same or a confusing trademark as yours in their domain names. If someone has registered a domain that incorporates your trademark or a confusing trademark, you can enforce your trademark rights to remove this domain name registration. We will briefly discuss domain name dispute resolution in a subsequent module.

RENEWING YOUR REGISTRATION

• Trademark rights generally last indefinitely, as long as the trademark holder continues to use the trademark in association with the particular goods or services.
• However, if you have a registered trademark, you will likely have to renew it periodically in order to preserve your rights. The duration of the registration varies among countries but falls roughly between 10 years (for example, in France) and 15 years (for example, in Canada), at which time the registration would have to be renewed.