Your trademark has been registered successfully with the United States Patent and Trademark Office (USPTO) – congratulations! Although the trademark application and trademark registration journey has ended, there is still “upkeep” work, or trademark maintenance, that must be done to maintain the validity of your trademark with the USPTO. Trademark maintenance involves paying attention to a few deadlines, most of which come from a few key sections of the Lanham Act.
But these obligations are extremely manageable with diligence and calendar reminders. 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.
THE TOP 3 POST-REGISTRATION TRADEMARK MAINTENANCE REQUIREMENTS ARE:
1. Declaration of Use of Mark in Commerce under Section 8 (also known as “Section 8 Declaration” or “Section 8 Affidavit” or “Section 8 Form”)
What is the Section 8 Form? 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.
When must you file the Section 8 Form? You must file your Section 8 Form 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.
A helpful way to view the Section 8 Form is as the main/base requirement. Fundamentally, if you think about it, use in commerce is an essential requirement of a registered trademark, and without use, there is abandonment. Fittingly, this form will have to be submitted forever, at the time intervals listed above.
What happens if you don’t file your Section 8 Form? Failure to timely file your Section 8 Declaration will result in the cancellation of your trademark registration.
Here’s a sample of the USPTO’s Section 8 Form.
2. Statement of Incontestability under Section 15 (“Section 15 Form”)
What is the Section 15 Form? The Section 15 Form is the form that a trademark registrant will use to make the claim that its trademark that is registered on the USPTO’s Principal Register is now incontestable. Marks on the Supplemental Register are not eligible for a Section 15 Form submission. The general rule for incontestability is that the trademark has continuously been in use in commerce for five (5) years following either the registration date, or the date of publication (pursuant to §12(c) , and the mark is still commercial use. 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.
When should you file the Section 15 Form? You may file the Section 15 Form within one (1) year following the end of either (a) any five-year period of continuous use following registration, or (b) any five-year period of continuous use after publication under § 12(c). This means between the fifth (5th) and sixth (6th) anniversaries you should file the Declaration of Incontestability, to your trademark can be declared incontestable.
What happens if you don’t file your Section 15 Form? Not filing a Statement of Incontestability will not result in cancellation of your mark, but failure to file a Section 15 Form would be giving up an added layer of trademark protection.
Here’s a sample of the USPTO’s Section 15 Form.
Combined Section 8 and Section 15 Form (Declaration of Use & Incontestability). You may have noticed that there is a very strong likelihood that you will be filing Sections 8 and 15 Forms at the same time (i.e. between the 5th and 6th anniversaries), so the USPTO has created a combined Form.
Here’s a sample of the USPTO’s Combined Sections 8 and 15 Form.
3. Trademark Renewal Request under Section 9 (“Section 9 Renewal” or “Section 9 Form”)
What is the Section 9 Renewal? The Section 9 Renewal is a written request from the trademark owner to the USPTO, asking that the USPTO keep their trademark registration in ACTIVE/LIVE status.
What happens if you don’t file your Section 9 Form? Similar to Section 8, trademark registrations will be canceled for failure to file the Section 9 Renewal. 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.
Combined Sections 8 and 9 Form. Just FYI, since the time to file the 10-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.
Here’s a sample of the USPTO’s Combined Sections 8 and 9 Form.
In closing…I hope this post will be a helpful resource for you. There may be many things going on in business and life, but 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.
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This post is not intended to be a substitute for legal advice. Consult a licensed business law or trademark attorney for specific business law questions that you may have.