A Trademark is a Living Asset
If you have a registered trademark with the United States Patent and Trademark Office (“USPTO”), you have taken a very important step in protecting your businesses’ brand. However, what happens after you receive that registration? Do you own your trademark forever? Not exactly. Once you have obtained a federal trademark registration, you must take certain steps to maintain the registration or you risk having it canceled by the USPTO.
A trademark is a living asset. In order to keep it alive you must show your continuous use of the trademark with the goods or services with which it was registered, and follow the maintenance requirements set forth by the USPTO. These requirements include the filing of specific documents, along with the payment of fees at regular intervals. The deadlines for filing these documents are calculated from the registration date shown on the registration certificate. Failure to file these documents will result in the cancellation and/or expiration of your registration.
Declaration of Use
The first document that is typically required for maintaining your trademark rights, after it has been properly registered, is called the Declaration of Use or Excusable Nonuse under Section 8 of the Lanham Act. See 15 U.S.C. §1058. This Declaration must be filed between the 5th and 6th year after the registration date and requires the payment of a fee to the USPTO. The filing may also be made within a 6-month grace period after the expiration of the 6th year with the payment of an additional fee. A Declaration of Use requires that the trademark owner:
- a) identify which items in the initial registration are currently being offered for sale;
- b) supply a specimen of the trademark as it appears on products or in connection with services being offered for sale; and,
- c) pay the applicable filing fee.
In addition, the trademark owner may indicate which goods should be deleted from the registration, if certain products are no longer being offered for sale. Anything that is not currently being offered for sale should be deleted.
Application for Renewal
Between the 9th and 10th year after the registration date of the trademark, the owner must file a Declaration of Use and/or Excusable Nonuse and Application for Renewal, or a combined form of both of these documents, pursuant to Sections 8 and 9 of the Lanham Act. Id.; See also, 15 U.S.C. §1059. The USPTO forms combine the Section 8 declaration identified above with the Section 9 renewal application. The renewal application also requires payment of a filing fee and constitutes a request to keep a mark registration active and confirms the accuracy of the information being provided to the USPTO. Finally, the Declaration of Use and/or Excusable Nonuse and Application for Renewal must be filed every subsequent 10 years after its initial filing.
Maintaining your trademark registration is imperative in protecting your brand name and/or logos so that potential trademark infringements can be more easily stopped. Losing your trademark rights through cancellation of a trademark can cost your business a valuable asset and allow third parties to begin using a trademark that you invested a significant amount of time, goodwill and resources in developing. If you have a registered trademark and seek maintenance protection, contact the experienced trademark & copyright attorneys at Gehres Law Library to insure your rights are not lost.