Trademark Renewals: Keeping Your Trademark Alive and Thriving
So, you’ve got that shiny trademark registration in hand, proudly showcasing your brand’s uniqueness and identity. You’re ready to conquer the market, but here’s the catch – it’s not a “set it and forget it” deal. To maintain your trademark registration and keep it alive, there are specific things you must do. Welcome to the world of trademark renewals, where deadlines and paperwork are the order of the day.
Understanding the Basics of Trademark Renewals
First things first, what exactly are trademark renewals, and why do they matter? Well, imagine your trademark registration as a plant in a garden. You need to tend to it regularly, water it, and make sure it thrives. In the world of trademarks, renewals are the equivalent of taking care of that precious plant.
To maintain your trademark registration and keep it alive, you must use your trademark in commerce continuously. Additionally, you must file certain documents at regular intervals to show that you’re continuing to use your trademark. If you don’t file these documents before the deadline, your registration will be canceled. Exceptions to the requirement to use your trademark are rare, so it’s essential to stay on top of these renewals.
NOTE: We recommend that trademark applicants have protective research done in order to find potential infringers to your trademark. “You, as the mark owner, are solely responsible for enforcement.” The USPTO will not police your marks for you and leave it up to the owners to maintain, protect, and enforce their own marks.
The way to do so is (1) have comprehensive research conducted every 2-3 years to ensure no other party has filed a State or Federal trademark or is using the mark on a Common-Law basis and (2) if there are potential infringers, speak to a trademark attorney about cease & desists. TradeMark Express offers protective trademark research & trademark renewal application preparation.
Now, let’s dive deeper into the nitty-gritty of trademark renewals.
Deadlines for Filing Registration Maintenance Documents
There’s a rhythm to trademark renewals, and it’s all about deadlines. You must file these documents within specific timeframes to keep your trademark registration alive:
– Between the fifth and sixth years after the registration date, you need to file a Declaration of Use and/or Excusable Nonuse under section 8.
– Between the ninth and tenth years after the registration date, it’s time to file the first Declaration of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9.
– Every ten years thereafter, including the 19th, 29th, and so on, you must file subsequent Declarations of Use and/or Excusable Nonuse along with an Application for Renewal under sections 8 and 9.
Section 8 Filing - The Fifth to Sixth Year Check-Up
Let’s start with that section 8 filing that must happen between the fifth and sixth years after the registration date. This is a critical step, as failure to file a Section 8 Declaration can lead to the cancellation of your registration.
In your Section 8 declaration, you need to provide the following information:
- “The registration number.
- The name and address of the current owner.
- The filing fee per class of goods or services in the registration.”
- A statement confirming the trademark is in use in commerce.
- A list of the goods or services connected to the trademark in use.
- A specimen, per class, demonstrating how the trademark is used.
Sections 8 & 9 Combined Filing - The Tenth Year and Beyond
Now, let’s fast forward to that ten-year mark and beyond. Every ten years, you need to submit a combined declaration of use and/or excusable nonuse and an application for renewal under Sections 8 and 9. These two sections cover the ongoing use of your trademark and your intent to keep it going.
In your combined filing for Sections 8 and 9, provide the following details:
- “The registration number.
- The name and address of the current owner.
- The filing fee per class of goods or services in the registration.
- A statement that the trademark is in use in commerce.
- A list of the goods or services in connection with which the trademark is in use.”
- A specimen, per class, showing how the trademark is used.
The Six-Month Grace Period
Oh, and don’t forget about the six-month grace period after each deadline mentioned above. Yes, you can file during this grace period, but it’ll cost you an additional fee. If you miss this extended deadline as well, your registration will either be canceled or deemed expired. So, keep those deadlines on your radar!
Optional Filings - Declaration of Incontestability and Section 7 Amendment or Correction
In the world of trademark renewals, there are some optional filings worth considering. These can enhance the strength of your registration.
First, there’s the Declaration of Incontestability under section 15. If your mark has been registered on the Principal Register and meets specific legal requirements, including at least five years of continuous use in commerce, you can file this declaration. Incontestability essentially means that your registration becomes rock-solid, serving as conclusive evidence of the validity of your mark’s registration, your ownership, and your exclusive right to use it in commerce, with a few exceptions.
Now, here’s the second option – Section 7 Amendment or Correction of Registration. You can use this to make non-material corrections or amendments to your registration. For instance, “if you stop using your trademark with certain goods or services and you don’t have a required maintenance document due, you must use this form to request that [the USPTO] deletes those goods or services from your registration.” Accuracy is crucial here, as you are legally required to keep your registration up-to-date. Failure to do so before filing a required maintenance document will result in additional fees.
Continuous Use in Commerce
Let’s talk about the heartbeat of trademark renewals – continuous use in commerce. Maintaining your trademark registration isn’t a one-time deal; it’s an ongoing commitment. Trademark owners are typically entitled to federal registration only if they’re actively using their trademark in commerce.
Monitoring Proof of Use in Commerce
So, how does the USPTO keep tabs on this continuous use in commerce? Well, when you file a required maintenance document, you’ll need to submit a signed declaration confirming your ongoing use of the trademark with the goods and services listed in your registration. Along with this declaration, you’ll submit one specimen for each class of goods or services.
Registrations Can Be Audited
Here’s a curveball – your registration can be audited. The USPTO “randomly audits registrations with required maintenance filings” to ensure the trademark register reflects trademarks in use in commerce accurately. If your registration gets audited, you’ll need to provide more proof of use for additional goods and services listed in your filing. Failure to respond to the audit means your trademark registration will be canceled.
Accuracy Matters for the Life of Your Trademark
Remember, the accuracy of your trademark’s goods and services statement must be maintained throughout its life. If you stop using your trademark with some goods or services between required maintenance filings, promptly delete them from your registration. You won’t be charged a fee for this between-maintenance filing change. Always ensure your maintenance documents are accurate to avoid jeopardizing your registration. Only include goods or services for which you can provide evidence of your trademark use, or request an exception.
Post Registration Review
After you’ve filed your maintenance documents, a post registration trademark examiner will review them. Within one to two months, you’ll receive one of the following:
– A Notice of Acceptance, Notice of Renewal, and/or Notice of Acknowledgment if your filing is acceptable.
– An updated registration certificate if your Section 7 request to amend or correct the registration is accepted.
– An office action that must be answered in a timely manner. if your filing isn’t acceptable, “the USPTO will send an office action stating the reasons for refusal and any remedies available.” This also applies if your submission is selected for review under the Post-Registration Audit Program. Be sure to respond to any office action promptly, as non-response can lead to registration cancellation or expiration.
In a nutshell, trademark renewals are essential to keep your brand’s identity protected. Stay on top of deadlines, maintain accurate records, and keep your trademark in use in commerce. By doing so, you’ll ensure that your trademark registration remains not just alive but thriving in the ever-evolving world of business.