CPA Global's Bianca McDonogh provides some sound strategies on how to maintain your trademarks, protect your business and enhance your brand.
1. Ensure clearance
Before launching a trademark for your products or services, conduct searches for conflicting marks. Do this in your home country and also internationally, where appropriate. Some countries acknowledge unregistered rights, so where possible, conduct unregistered trademark searches. Be aware that even the most extensive searches can give no guarantee that the trademark is wholly free for use and registration, without conflict. Check within your own business that no one knows of existing use of the same or a similar mark by a competitor.
2. Do an internal IP audit
Is your house in order?
a. Identify the marks you use,
b. Identify the marks you plan to use.
Does your current portfolio extend to both a) and b)? Audit marks that are both commercially viable and capable of protection as registered trademarks. Identify whether your current trademark protection extends to these marks.
3. Review the extent of trademark protection
Are your trademarks protected for your international market? Regular trademark reviews can assess whether new trademark applications in additional countries and classes are necessary. Ring fence and extend your trademark protection. Where practical, consider protecting stylised trademarks in both stylised form and block capitals. Check the whole of your business regularly for used but unregistered trademarks.
4. Restrict infringement
Watch for third party registration or unlicensed use of your trademarks. If your trademark has a wide reputation and the unlicensed use takes advantage of that reputation, action may be possible for unapproved use, even if it’s used on goods or services that are different from your registrations. Be prepared to oppose new trademarks with marks or goods and services that are either the same or similar. Keep a particular watch on your competitors. Maintaining your trademark requires comprehensive policing to reduce dilution of your rights. Trade Marks Directory Service (TMDS) offers an extensive watching service that will alert you if a third party attempts to register the same or a similar trademark.
Trademarks are often modified over the course of time and use of a modified mark may be unable to support a registration of the unmodified mark.
5. Use it
Ensure your trademark is in continuous use in the form registered. Trademarks are often modified over the course of time and use of a modified mark may be unable to support a registration of the unmodified mark. In some countries, nominal use of the trademark is sufficient to maintain the validity of your registration. If you stop using your registered trademark, the registration may be vulnerable to cancellation. Consider re-filing important trademarks for registration once the existing registration becomes vulnerable to cancellation for non-use.
6. Keep it covered
Make sure your system for renewing trademark registrations is reliable. Ensure the registered protection for your trademark continues. CPA offers an automatic trademark renewals service.
7. A trademark is a sign of success! Announce its status with ™ and ®
Indicating as extensively as possible that your word or a device is a trademark will help to ensure it does not become generic. You will highlight the marks as your property and place emphasis on the importance of IP Rights to your business and your investors. It is illegal to indicate a trademark is registered when it isn't, but there is no prohibition on the use of the words ‘Trademark’ or the letters ‘TM’ to indicate a trademark.
8. Consider additional protection
In the UK, you can register a company name that incorporates your registered trademark at Companies House. If a trademark has a device element, it can be registered as a Community Design.
9. Pursue Profits
Negotiate licensing agreements for licensed use of your trademarks for potential sources of revenue.
10. Consult an expert
Get well-qualified advice from members of the trademark association in your jurisdiction because laws change frequently and you need to ensure your trademark portfolio is up-to-date.
This is a general guide, written with particular attention to trademarks and brands. It does not constitute legal advice. A trademark agent can give advice tailored to your circumstances.
Bianca McDonogh is an IP analyst at CPA with over seven years experience managing patent and trademark portfolios. For more information on trademark solutions from CPA contact
This article first appeared in IP Review, issue 7