Your trademark has been registered successfully with the United States Patent and Trademark Office (USPTO) – congratulations! Although this journey that has lasted for a few months has ended, there is still “upkeep” work that must be done to maintain the validity of your trademark with the USPTO. Most of these deadlines come from sections of the Lanham Act. Successful registrants must be aware of their ongoing responsibilities, and calendar them, so that routine trademark maintenance deadlines are not missed. Missing deadlines of this nature could result in a lack of overall protection of the mark in some cases, and abandonment of your trademark in other instances, which unfortunately could undo all of your hard work in registering your mark in the first place. Alternatively, you may also elect to retain a representative, with a docketing system to track these important maintenance deadlines for you and assist with timely filings.
A few examples of trademark post-registration maintenance requirements are:
#1 - Declaration of Use of Mark in Commerce under Section 8
This is a declaration or “affidavit” to inform the USPTO that your mark is still in commercial use, and that you have not abandoned it. You must file your Section 8 Declaration (or Section 8 Affidavit) at the following times:
· between the fifth (5th) and sixth (6th) anniversaries of your trademark registration; and
· between ninth (9th) and tenth (10th) anniversaries of your trademark registration; and
· each successive ten-year period thereafter.
Failure to file your Section 8 Declaration will result in the most severe consequences – cancellation of your trademark registration.
#2 – Renewal Request under Section 9
Similar to Section 8, trademark registrations will be canceled for failure to file this request. It is important to be aware that registrations cancelled for failure to file a Section 8 Declaration of Use and Section 9 Renewal cannot be revived or reinstated.
Just FYI, since the time to file a ten-year Section 8 Declaration will coincide with the time for filing a Section 9 Renewal Request, there is a combined form to handle the Section 8 Declaration and Section 9 Renewal at the same time. Both forms (or the combined form) are available in the Trademark Electronic Application System (TEAS).
#3 – Statement of Incontestability under Section 15
Although failure to file a Statement of Incontestability will not result in cancellation of your mark, failure to do so would be giving up an added layer of trademark protection. Here’s how it works: after five (5) years of consecutive/continuous use of your trademark, from the date of registration, your trademark can be declared incontestable. This means between the fifth (5th) and sixth (6th) anniversaries you should file the Declaration of Incontestability. This is an added layer of protection, because an incontestable trademark is largely immune from challenge except if it has become the generic term for the goods, abandoned due to nonuse, or acquired by fraud. Having an “incontestable” mark will strengthen your chances should a trademark infringement action arise.
Stay on top of your post-registration maintenance requirements with the USPTO to ensure the strongest protection of your trademark. Tracking trademark maintenance deadlines and filing requirements are extremely important tasks, but are tasks that can be easily outsourced to your business lawyer, so that you can focus on what matters most – your business.