USPTO Trademark Maintenance Requirements
A trademark registration issued by the United States Patent and Trademark Office (USPTO) can technically last indefinitely, as long as the trademark owner continues to use the trademark in commerce and properly maintains and renews the trademark registration.
Initially, a trademark registration is valid for 10 years. However, between the 5th and 6th year after the registration date, the owner must file specific documentation, including a “Declaration of Use Under Section 8,” to confirm the trademark is still being used in commerce. If the owner does not do this, the trademark registration will be cancelled. Note, the trademark owner may also file a Section 15 Declaration of Incontestability between the 5th and 6th year after the trademark registration date.
After the initial 10 years, the trademark registration can be renewed for additional 10-year periods. This involves filing a combined “Declaration of Use and Application for Renewal under Sections 8 and 9” within the year before each 10-year anniversary of the registration.
Please note, all these processes are subject to certain fees and requirements. Failure to maintain the trademark properly can result in the cancellation of the trademark registration.
Trademark Maintenance Services
Our law firm provides a range of trademark maintenance services. First and foremost, we monitor USPTO trademark registration deadlines to ensure all necessary documents are filed on time. This is crucial as missing any of the filing deadlines could lead to the cancellation of the trademark registration. Specifically, between the fifth and sixth year after registration, a Declaration of Use and Incontestability must be filed to prove that the trademark is still in use. Every ten years, a combined Declaration of Use and Application for Renewal must also be filed to keep the registration active.
In addition to handling these filings, our trademark attorneys can assist in maintaining the strength and scope of the trademark. We can advise on proper use of the trademark to prevent it from becoming generic or diluted. We can also monitor for potential infringements and take action to enforce the trademark rights when necessary.
Our attorneys also provides counsel in the event of changes that may affect the trademark registration. For instance, if the trademark owner is considering modifying the trademark or expanding its use to new goods or services, our attorneys can advise on the potential implications and any necessary steps.
In sum, our trademark attorneys play an essential role in maintaining a client’s trademark registration(s), handling everything from required routine filings to advising on strategic decisions and representing the holder in legal disputes.
Trademark Renewals – Section 9 Application
A Section 9 Renewal application is a formal legal document that must be filed with the United States Patent and Trademark Office (USPTO) to renew a federal trademark registration. The process is part of the USPTO’s mechanisms to ensure that trademarks in its registry are still in use.
The Section 9 Renewal application needs to be filed every 10 years from the date of federal trademark registration. It must be submitted within the year before each 10-year registration anniversary.
In order to properly file a Section 9 Renewal, you need to provide the following information:
The USPTO registration number.
The current owner’s information.
A declaration that the trademark is still in use in commerce, or, if it’s not currently in use, a valid reason for non-use.
A list of the goods or services with which the mark is still in use. If the mark is not in use with certain goods or services that were initially included in the registration, those goods or services should be excluded from the Section 9 Renewal application.
Examples showing the mark being used in commerce (specimen).
The required filing fee.
Delete Products and/or Services That Are No Longer In Use
Trademark owners must proactively delete any goods or services from their trademark registration that they are no longer using in commerce when filing maintenance and renewal documents with the USPTO.
When filing a Declaration of Use under Section 8 or a combined Declaration of Use and Renewal Application under Sections 8 and 9, a trademark owner must affirm that the trademark is still in use in commerce for each of the goods or services listed in the registration. If the trademark is not being used for certain goods or services, those goods or services must be deleted from the registration.
Providing false information to the USPTO can result in the cancellation of the entire trademark registration, so it’s critical to accurately specify the goods or services for which the trademark is in use.
Filing Early is The Best Strategy
Filing as soon as the trademark renewal window opens is always the best strategy. Doing so should give the trademark owner (and its attorneys) enough time to resolve any correctable errors without paying an additional fee if the USPTO rejects the trademark renewal filing.
Declaration of Continued Use – Section 8 Affidavit
Once a trademark is registered with the USPTO, the trademark owner is required to file a Section 8 Affidavit to maintain the registration.
Specifically, this must be done between the 5th and 6th year after the registration date, and it must be filed again at the 10-year mark and every 10 years thereafter. The Section 8 Affidavit is essentially a declaration of use, in which the trademark owner affirms that the trademark is still in active use in commerce for the goods or services listed in the registration. If the mark is not currently in use, the owner must provide a valid reason for its non-use.
In the affidavit, the owner should include a specimen showing current use of the mark in commerce. Failure to file a Section 8 Affidavit within the required timeframes can result in the cancellation of the trademark registration.
Note that when the 10-year renewal comes up (and every 10 years thereafter), the Section 8 Affidavit is usually combined with a Section 9 renewal application, which serves to renew the trademark registration for another 10 years. These requirements ensure that registered trademarks in the USPTO database are actively being used in commerce.
USPTO Post Registration Audit Program – Pilot Program Started In November 2017
The USPTO randomly audits registrations with required maintenance filings to help preserve the trademark register as a reliable reflection of trademarks in use in commerce. Registrations are entitled to be maintained only for goods or services for which the trademark is in use in commerce or for which temporary nonuse is excused due to special circumstances. Inaccurate or improper use claims in registration maintenance filings jeopardize the validity of your registration, may unnecessarily block future applications, and diminish the utility of the trademark register to provide notice of trademark rights to businesses and the public. If the USPTO audits your registration maintenance filing, you will be required to prove use of your trademark for additional goods and services in the registration. If you do not respond to the audit, your registration will be canceled. If you respond but do not provide proof of use for those goods or services, you will be required to delete them from the registration. In addition, you must pay a $250 deletion fee per class each time goods or services are removed, and possibly a $100 deficiency surcharge, or your entire registration will be canceled.