Get Started – Trademark Renewals & Maintenance
Trademark maintenance refers to the ongoing actions that a trademark owner must take in order to keep their trademark registration active, valid and enforceable. This includes using the trademark in commerce, monitoring for and taking action against infringing uses of the trademark, and renewing the registration every ten years.
One important aspect of trademark maintenance is the continued use of the mark. In order for a trademark registration to remain valid, the mark must be used in commerce in connection with the goods or services for which it is registered. This means that the trademark owner must be actively using the mark on or in connection with their goods or services, and not just reserving it for future use.
Another important aspect of trademark maintenance is monitoring for infringing uses of the mark. As the trademark owner, it is your responsibility to police and protect your mark. This means that you should be on the lookout for any uses of your mark that may be confusingly similar to your mark, and take appropriate action to stop those uses.
What Is A Combined Declaration of Use and Incontestability under Sections 8 & 15?
Between the fifth and sixth year of a trademark registration, the owner is required to file a Section 8 Affidavit of Continued Use or Excusable Nonuse and an optional Section 15 request for Incontestability, along with the required fee.
The Section 8 Affidavit of Continued Use or Excusable Nonuse is a legal statement that attests to the continued use of the trademark in commerce during the preceding five years. The trademark owner must provide evidence of such use, such as a specimen of the mark as used on the goods or services, or a statement explaining any nonuse of the mark that is excusable. If the trademark owner is unable to provide evidence of use or excusable nonuse, the registration will be cancelled.
A Section 15 Incontestability is a legal status that can be obtained by the owner of a registered trademark with the United States Patent & Trademark Office (USPTO). It is established under Section 15 of the Lanham Act, which governs trademark law in the United States.
In order to obtain incontestable status, the owner of a registered trademark must file a declaration with the USPTO, which must include a verified statement that the mark has been in continuous use in commerce for at least five consecutive years since the date of registration. The declaration must also be filed within the window of the fifth and sixth year of registration. Once the declaration is accepted, the mark will be entitled to incontestable status.
The main benefit of incontestable status is that it provides the owner with a number of legal presumptions, such as a presumption that the mark is valid, that the registrant has the exclusive right to use the mark in commerce, and that the registrant has the exclusive right to use the mark in connection with the goods or services listed in the registration. Additionally, it makes it more difficult for third parties to challenge the validity of the mark on certain grounds.
It is worth to notice that a Section 15 Incontestability can be combined with a Section 8 Declaration of Use, a requirement to show that the mark is still in use in commerce. To file a Combined Declaration, the owner must have used the mark in commerce for at least five consecutive years since the date of registration, and the mark must not be the subject of any pending litigation or opposition proceedings. The declaration must be filed within the window of the fifth and sixth year of registration.
As noted above, it is important to note that failure to file the required maintenance documents and fees by the deadline will result in the cancellation of the trademark registration. Additionally, USPTO sends out reminders to the owner of the trademark, or the trademark attorney of record, on the 5th year anniversary date of the trademark registration.
What Trademark Renewal Requirements Must Be Addressed To Keep A Trademark Registration Active?
To maintain an active trademark registration with the USPTO, the trademark owner must file a Section 8 Declaration of Use and a Section 9 Renewal Application. The Section 8 Declaration must be filed between the fifth and sixth year following registration, and every ten years thereafter, and must include a sworn statement that the trademark is still in use in commerce. The Section 9 Renewal Application must be filed within the year preceding the end of each ten-year period after the date of initial registration. The renewal application must include a sworn statement that the trademark is still in use in commerce and pay the required fee.
If the trademark owner does not file a Section 9 Renewal Application within the year preceding the end of each ten-year period after the date of initial registration, the USPTO will cancel the trademark registration. It is the responsibility of the trademark owner to file the necessary maintenance documents and pay the required fees to maintain an active registration with the USPTO. It’s important to note that once a registration is cancelled, it can’t be revived or restored.
Excusable Nonuse Examples
The USPTO recognizes certain circumstances as valid reasons for excusable nonuse of a trademark. These include:
It’s important to note that the above are some examples of excusable nonuse, but the USPTO will review each case on a case-by-case basis and the owner must prove that the nonuse of the trademark is due to one of the above reasons and the owner have a bona-fide intent to resume use of the trademark in the future.
Excusable Nonuse Caused by Covid-19
If COVID-19 has directly impacted you or your business and temporarily prevented you from using your trademark after the trademark is registered, you may request to be temporarily excused from using your trademark. The USPTO will require you to respond to the following questions:
