Do you know that a trademark registration issued by the USPTO can last forever, as long as you address certain trademark maintenance and renewal steps? Knowing that it is possible to maintain your federal trademark registration for as long as you continue to use the trademark in interstate commerce and file the required maintenance documents helps business plan for the future. Just remember that if you fail to do address certain trademark maintenance and renewal steps, your trademark registration will expire or be cancelled. If your trademark registration expires or is cancelled, you would need to start the USPTO trademark application process all over again to seek nationwide protection for your trademark.

Trademark Renewals – Section 9 Application

Under the Lanham Act, trademark registrations remain in force for 10 years and can be renewed indefinitely for 10-year periods by filing a Section 9 Renewal.  However, these timelines are not automatic and a trademark owner must be diligent with its periodic trademark maintenance requirements to keep the trademark registration active and valid.  Trademark owners must file certain documents with the USPTO periodically to show that the trademark continues to be used in the marketplace.  If the trademark owner fails to file these documents at certain times, the trademark registration will cancel or expire, or the protections afforded in the US will be invalidated (if the registration was filed under the Madrid Protocol System).

Evidence of Continued Use to Maintain Trademark Registration

Generally, trademark owners are only entitled to a federal registration if they’re using their trademark in commerce with the products and/or services described in the registration. Trademark owner must prove use in commerce when applying for trademark registration. However, demonstrating trademark use once isn’t enough. Trademark owners must regularly demonstrate continued use throughout the life of the trademark to keep the trademark registration active and receive all the benefits under the Lanham Act.

Delete Products and/or Services That Are No Longer In Use

Trademark owners must proactively delete any products and/or services that are described in the registration if they are no longer being sold.  This is done through a Section 7 request to the USPTO at the time of any trademark renewal. If a trademark owner fails to accurately describe the products and/or services that continue to be sold, the trademark registration could be subject to challenge and cancellation.  Therefore, a trademark owner should only include the product and/or services that it can provide evidence of continued use to avoid jeopardizing the registration.

Deadlines for Filing Trademark Maintenance Documents

Trademark owners must file these documents within these deadlines to keep its trademark registration alive:

  • Between the fifth and sixth years after the registration date: File a Declaration of Use and/or Excusable Nonuse under Section 8.
  • Between the ninth and 10th years after the registration date: File the first Declaration of Use and/or Excusable Nonuse and an Application for Renewal under Sections 8 and 9.
  • Every 10 years after that (between the 19th and 20th years, 29th and 30th years, etc.):  File subsequent Declarations of Use and/or Excusable Nonuse and an Application for Renewal under Sections 8 and 9.

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 registers with the USPTO, a Section 8 Affidavit must be filed between the 5th and 6th years and 9th and 10th years after the trademark registration date.  The Section 8 Affidavit is mandatory if the trademark owner wants to keep its registration alive and valid.  An affidavit is a sworn written statement a person makes before the USPTO that certain facts are true to the best of that person’s knowledge.  The Section 8 Affidavit requires the business (or its trademark attorney) to attest to the use, and continued use (or excusable non-use), of the trademark in commerce in connection with all of the products and/or services listed in the trademark registration.  For the first Section 8 Declaration, “continuous use” means that the trademark has been continuously used in commerce for five consecutive years after the date of the trademark registration and is still in use in commerce in connection with all the products and/or services listed in the trademark registration.  The trademark owner will also be required to submit evidence showing the trademark in use in commerce as associated with the products and/or services listed in the trademark registration.

Obviously businesses, brands and products evolve and there are situations in which the original products and/or services described in the original trademark application have been recalled or are no longer provided.  When a trademark owner files its Section 8 Affidavit declaring use in connection with products and/or services described in the trademark application, they will have the opportunity to delete those products and/or services that are no longer being sold in the marketplace.  Note, however, once these products and/or services are deleted from the registration, they cannot be added back.  As such, if a business owner brings back a product and/or service to the marketplace that was deleted from the original trademark application, the trademark owner will need to cover those products and/or services again in a new trademark application.

A trademark registered with the USPTO (both on the Supplemental Register and Principal Register) will automatically cancel on the 6th year anniversary of its registration date unless the trademark owner files, within the 5th year anniversary, a Section 8 Affidavit.  The same automatic cancellation occurs on the 10th anniversary of the registration date unless the trademark owner files, within the 9th year, the Section 8 Affidavit or declaration of continued use.  Again, the Section 8 Affidavit is mandatory if the trademark owner wants to keep its registration alive and valid.  One of the primary purposes of the Section 8 Affidavit is to remove those registered marks that are no longer in use.  These trademark registration are sometimes called “deadwood.”  Removal of unused trademarks (or deadwood) from the USPTO databases will help better reflect the reality of registered trademarks in the marketplace.

Note, a Section 71 declaration of use is very similar to the Section 8 declaration of use.  A Section 71 declaration is used for a US trademark registration based on the Madrid Protocol.  The Madrid Protocol is one of two treaties comprising the Madrid System for international registration of trademarks. The Madrid Protocol provides a cost-effective and efficient way for trademark owners – individuals and businesses – to register and manage their trademarks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency.  Moreover, no local agent is needed to file the initial application. An owner of a US trademark registration based on the Madrid Protocol is also required to make periodic filings of an affidavit or declaration of use of the registered trademark.  If a Section 71 declaration of use is not timely filed, the US trademark registration based on Madrid Protocol will be automatically cancelled.

Incontestability – Section 15 Affidavit

In certain circumstances trademarks that are registered on the USPTO Principal Register may achieve “incontestable” status.  Incontestability is requested by the trademark owner between the 5th and 6th year anniversary of a trademark registration date by filing a Section 15 Affidavit.  Trademarks that are registered on the USPTO Supplemental Register can never become “incontestable.”  Incontestable trademarks are trademarks that are immune from being challenged.  In other words, the trademark registration is presumed to be properly registered and valid, that the trademark owner is indeed the owner of the trademark registration, and that the trademark owner has the exclusive right to use the trademark with all the products and/or services described in the trademark registration.  Although every trademark owner should request “incontestable” status of its trademarks, the title “incontestable” is a bit misleading.  The legal status of “incontestability” is not determined by the USPTO. Rather, incontestability is determined by a court if incontestability status is challenged.  As such, if a trademark registration is challenged, a court has the power to examine the Section 15 Affidavit of incontestability to determine if it is accurate and operative.  If an essential statement made by the trademark owner in the Section 15 Affidavit is not true, the court may declare that the trademark registration does not enjoy the status of incontestability.  That said, businesses or individuals seeking to challenge an incontestable trademark will have the heavy burden of persuading the court to overturn a trademark’s status of incontestability – it’s certainly not easy.

Amending A Trademark Registration

Once a trademark has officially registered with the USPTO, there may be circumstances in which the trademark owner may want to amend its registration.

Correcting Mistakes in a Registration

If a trademark owner discovers a material mistake in the registration that was caused by the examining attorney or paralegal of the USPTO, a certificate of correction may be issued without cost to the trademark owner.  On the flip side, if the mistake in the registration was caused by the trademark owner, the USPTO may issue a certificate of correction if the correction does not involve a significant change to the registered trademark.  The trademark owner would need to apply for the correction, provide a declaration under oath, and pay a filing fee.  Therefore, correcting a part of the registered mark is permitted only if that part is not a prominent feature of the trademark so that the correction would not materially alter the overall character or commercial impression of the trademark. If the correction involves a significant change to the registered trademark, the trademark owner may be required to endure the trademark registration process again (including paying additional filing fees).

The Material Alteration Rule

As noted above, if a trademark owner requests that a material mistake be corrected through an amendment, the USPTO examining attorney may issue a refusal due to the material alteration rule.  If a refusal is issued, the trademark owner must file a new trademark application and start over from the beginning.  An amendment to a trademark registration cannot make a change that materially alters the character or commercial impression of the trademark.  This “material alteration” rule is the test for changes to the trademark at all stages during the application process (and after the trademark has been registered). The reason for requiring the trademark owner to re-register the trademark to correct a material mistake is because competitors must have the opportunity to oppose the corrected trademark if such competitors believe the trademark registration would cause damage to their business or brand.

Trademark Maintenance Filing Timelines

After all trademark maintenance filings have been submitted to the USPTO, the examining attorney will review all submissions within 1-3 months and will issue the trademark owner one of the following:

A Notice of Acknowledgement

If a trademark owner’s Section 8 or Section 71 Declaration and/or Section 9 Renewal is acceptable, or the Section 15 Incontestability Declaration can be acknowledged, the USPTO will send a Notice of Acceptance, Notice of Renewal, and/or a Notice of Acknowledgement.

An Updated Trademark Registration Certificate

If a trademark owners Section 7 Request to amend or correct the registration is acceptable, the USPTO will send an updated registration certificate that reflects the changes requested in the trademark filing.

An Office Action

If the Section 8, Section 71 or Section 15 Incontestability Declaration and/or Section 9 Renewal or Section 7 Request isn’t acceptable, the USPTO will send an office action stating the reasons for refusal and any remedies available. The trademark owner will also receive an office action if the Section 8 or Section 71 submission is selected for review under the Post-Registration Audit Program (The USPTO randomly audits trademark registrations with required maintenance filings to ensure ALL products and/or services are in use in commerce to help preserve the trademark register as a reliable reflection of all trademarks in use in commerce). If a trademark owner doesn’t respond to an office action issued for a Section 8 or Section 71 Declaration or a Section 9 Renewal request, the trademark registration will be canceled and/or expire. If the trademark owner doesn’t respond to an office action issued for a Section 7 Request, or for a separately filed Section 15 Incontestability Declaration, the filing itself will be abandoned.