An Overview Of Our Trademark Maintenance Services

What Is Trademark Maintenance & Is It Important?

The United States Patent & Trademark Office (USPTO) has specific trademark maintenance requirements that trademark registration owners must meet to ensure their trademarks remain active. A key requirement is that trademark maintenance documents need to be filed between the fifth and sixth anniversary of the trademark registration date. It’s important to note that a trademark registration issued by the USPTO can last indefinitely, provided that the owner continuously uses the trademark in interstate commerce and adheres to the necessary maintenance and renewal steps.

Understanding that you can maintain your federal trademark registration indefinitely is crucial for business planning. Continuous use of your trademark in commerce and timely filing of maintenance documents are essential to preserve the rights granted by the registration. However, if these maintenance and renewal steps are not addressed, your trademark registration could expire or be cancelled. In such cases, you would need to reinitiate the USPTO trademark application process from scratch to regain nationwide protection for your trademark. This underscores the importance of staying vigilant about trademark maintenance requirements to avoid the complexities and costs of reapplying for registration.

Trademark Renewals – Section 9 Application

Under the Lanham Act, trademark registrations are valid for 10 years and can be renewed indefinitely every 10 years by filing a Section 9 Renewal. However, maintaining these registrations requires diligent adherence to periodic maintenance requirements to ensure that the trademark remains active and valid. Trademark owners must periodically file specific documents with the USPTO to demonstrate that the trademark is still being used in commerce. Failure to submit these documents within specified deadlines can lead to the cancellation or expiration of the trademark registration, or invalidate the protections offered in the U.S. if the registration was filed under the Madrid Protocol System.

Evidence of Continued Use

To maintain a federal trademark registration, owners must prove that the trademark is actively used in commerce with the products or services listed in the registration. Initial proof of use is required during the application process, but demonstrating continued use is essential throughout the life of the trademark to keep the registration active and benefit from all protections under the Lanham Act.

Deleting Inactive Products or Services

It is also crucial for trademark owners to delete any products or services from the registration that are no longer being sold. This action is typically carried out through a Section 7 request to the USPTO at the time of trademark renewal. If the list of goods or services is not accurately maintained to reflect only those that are actively sold, the trademark registration may be challenged and potentially canceled. Hence, trademark owners should ensure that they can provide evidence of continued use for all items listed to avoid jeopardizing the registration.

Important Deadlines for Maintenance Documents

To maintain their trademark registration, owners must meet the following deadlines:

  • Between the fifth and sixth years after the registration date, a Declaration of Use and/or Excusable Nonuse must be filed under Section 8.
  • Between the ninth and 10th years following the registration date, both a Declaration of Use and/or Excusable Nonuse and an Application for Renewal must be filed under Sections 8 and 9.
  • Subsequently, every 10 years (e.g., between the 19th and 20th years, 29th and 30th years, etc.), similar Declarations and an Application for Renewal must be submitted under the same sections.

The Benefit of Filing Your Trademark Renewal Early

To avoid complications, trademark owners should file renewal documents as soon as the trademark renewal filing window opens. Early filing provides ample time to address and correct any errors that may be identified by the USPTO, potentially without incurring additional fees. This proactive approach ensures continuous protection and avoids the risks associated with last-minute filing or oversight of required documents.

Declaration of Continued Use – Section 8 Affidavit

After a trademark is registered with the USPTO, maintaining its validity requires the timely submission of a Section 8 Affidavit. This affidavit must be filed between the 5th and 6th years following the registration date, as well as between the 9th and 10th years. The Section 8 Affidavit is a crucial document wherein the trademark owner declares under oath that the trademark is still in use in commerce, or that any non-use is excusable, with respect to the products and/or services listed in the registration.

For the initial Section 8 Declaration, “continuous use” is defined as the trademark’s consistent use in commerce for five consecutive years post-registration, and that it remains in use. Additionally, the trademark owner must provide evidence of the trademark’s use in commerce, connected to the listed products and services.

It’s important to recognize that businesses evolve over time, leading to changes in the products or services originally covered by a trademark registration. During the filing of the Section 8 Affidavit, trademark owners have the opportunity to delete any products or services that are no longer available in the marketplace from their registration. However, once removed, these items cannot be reinstated under the same registration. If a product or service is reintroduced to the market, a new trademark application must be filed to cover it.

A trademark registration, whether on the Principal or Supplemental Register, will be automatically cancelled on the 6th anniversary of its registration unless a Section 8 Affidavit is filed during the 5th year. The same cancellation rule applies on the 10th anniversary, requiring the filing of a Section 8 Affidavit within the 9th year. The filing of this affidavit is essential for keeping the trademark registration active and legally enforceable.

The purpose of the Section 8 Affidavit is to clear the USPTO’s database of “deadwood,” or trademarks that are no longer in use. This helps ensure that the registry accurately reflects the trademarks that are actively used in commerce.

For trademarks registered in the U.S. based on the Madrid Protocol, a similar process applies, involving a Section 71 Declaration of Use. The Madrid Protocol simplifies the process for registering trademarks in multiple countries through a single application, making it cost-effective and efficient. Trademark owners must also make periodic filings to affirm the use of their trademark under Section 71. Failure to timely file this declaration will result in automatic cancellation of the U.S. registration based on the Madrid Protocol. This process, like the Section 8 declaration, is designed to keep the registry up-to-date with active trademarks and eliminate those that are no longer in use.

Incontestability – Section 15 Affidavit

Trademarks registered on the USPTO Principal Register have the opportunity to achieve “incontestable” status under certain conditions. This status can be requested by filing a Section 15 Affidavit between the 5th and 6th anniversary of the trademark’s registration date. It’s important to note that trademarks registered on the USPTO Supplemental Register are not eligible for incontestability.

Achieving incontestable status significantly strengthens a trademark’s rights and defenses. An incontestable trademark is protected against challenges regarding its validity. Specifically, the registration is presumed valid, the registrant is recognized as the owner of the trademark, and their exclusive right to use the trademark in connection with the listed products and/or services is acknowledged. This presumption affords substantial legal benefits and reinforces the trademark’s protection.

However, the term “incontestable” can be somewhat misleading. While it implies a strong degree of protection, incontestability does not mean the trademark is immune to all forms of challenge. The status of incontestability is not determined by the USPTO but can be challenged in court. If a trademark’s incontestability is contested, the court will scrutinize the Section 15 Affidavit to verify its accuracy and validity. If it finds that any crucial statement in the affidavit is untrue, the court may rule that the trademark does not enjoy incontestable status.

For those seeking to challenge an incontestable trademark, the burden of proof is high. They must convincingly persuade the court to overturn the trademark’s incontestable status, which is a challenging and often arduous task. Therefore, while every trademark owner should pursue incontestable status to maximize the protection of their intellectual property, they must also ensure that all statements made in the Section 15 Affidavit are accurate and truthful to maintain this powerful shield against challenges.

Do You Need To Amend A Trademark Registration?

Once a trademark is officially registered with the USPTO, there may be instances where a trademark owner needs to amend their registration. This could be due to several reasons, including correcting errors in the registration details.

Correcting Mistakes in a Registration

Mistakes in a trademark registration can be rectified depending on who made the error. If the mistake was made by the USPTO’s examining attorney or a paralegal, the trademark owner can obtain a certificate of correction at no cost. However, if the error originated from the trademark owner, the correction process involves more steps. The owner must apply for the correction, submit a sworn declaration, and pay a filing fee. Importantly, corrections by the trademark owner are only allowed if they do not significantly alter the registered trademark. Minor corrections that do not change the trademark’s prominent features or its overall character and commercial impression are typically permissible. If a proposed correction significantly alters the trademark, the owner may need to undergo the entire trademark registration process again, including paying additional fees.

The Material Alteration Rule

This rule is pivotal in determining whether a correction or amendment to a registered trademark is allowable. If a trademark owner seeks to amend their registration to correct a material mistake, the USPTO examining attorney might refuse the amendment based on the material alteration rule. This rule states that no amendment can be made to a registered trademark if it materially alters the character or commercial impression of the trademark. The rule applies throughout the application process and even after the trademark has been registered.

If a proposed amendment is refused due to the material alteration rule, the trademark owner must file a new application and start the registration process from scratch. This requirement exists because competitors must have the opportunity to oppose a trademark if they believe the amended registration could harm their business or brand. Thus, any substantial change proposed to a registered trademark that may affect its identity or how it is perceived commercially necessitates a fresh start, ensuring that the integrity of the trademark registration process is maintained and that all stakeholders have a chance to voice concerns or opposition.

Trademark Maintenance Filing Timelines

After a trademark owner submits all required maintenance filings to the USPTO, an examining attorney reviews these submissions typically within 1-3 months. Depending on the findings, the trademark owner will receive one of the following responses:

Notice of Acknowledgement: If the filings, such as the Section 8 or Section 71 Declaration, Section 9 Renewal, or the Section 15 Incontestability Declaration, are found to be acceptable, the USPTO will issue a Notice of Acceptance, Notice of Renewal, or a Notice of Acknowledgement. These notices confirm that the maintenance filings have been accepted and that the trademark’s protections are continued or affirmed.

Updated Trademark Registration Certificate: If the trademark owner submits a Section 7 Request to amend or correct the registration and it is approved, the USPTO will issue an updated registration certificate. This updated certificate will reflect the changes made as requested in the trademark filing, ensuring that the registration accurately represents the current status of the trademark.

Office Action: In cases where the Section 8, Section 71, Section 15, Section 9 Renewal, or Section 7 Request filings are not acceptable, the USPTO will issue an office action. This document outlines the reasons for refusal and details any available remedies to address the deficiencies. If a submission is selected for the Post-Registration Audit Program, an office action may also be issued. This audit program is part of the USPTO’s efforts to ensure that the trademarks registered and maintained accurately reflect those actually in use in commerce, thereby preserving the integrity of the trademark register.

If a trademark owner fails to respond to an office action related to a Section 8 or Section 71 Declaration or a Section 9 Renewal request, their trademark registration will be canceled or allowed to expire. Similarly, if no response is given to an office action regarding a Section 7 Request or a separately filed Section 15 Incontestability Declaration, the filing itself will be considered abandoned.

It is crucial for trademark owners to promptly address any office actions received to maintain their trademark registrations and avoid the risk of cancellation or expiration. This proactive approach ensures the continued protection of their intellectual property rights in the marketplace.

Contact Our Charleston Trademark Attorneys

If you require assistance with your trademark, our trademark attorneys are here to help! We can guide you through the entire process of trademark maintenance and renewal. Additionally, if our we are appointed as the attorney of record for your trademark registration, we can address all your trademark maintenance and renewal deadlines. This ensures that all necessary documents are timely submitted to the USPTO, keeping your trademark registration active and live as long as you continue to use your trademark in the marketplace. Let us handle the details, so you can focus on growing your business.  We invite you to contact our law firm by giving us a call or completing our online contact form.  We make every effort to respond to all inquiries within one business day.