Trademark Renewal Filings: Here’s What You Need to Know

 

Unfortunately, registering your Trademark in the United States Patent and Trademark Office (USPTO) is only the start of your fabulous journey of intellectual property proprietorship.  As we’ve seen in previous articles, the USPTO is a stickler for time and dates and if you do not file the necessary renewal filings, the USPTO may very well cancel your trademark.  Let’s dig in.

Trademark Renewal Filings

 

Two Main Trademark Renewal Filings to Maintain a US Trademark registration

The United States Patent and Trademark Office wants to make sure that you are not claiming rights to a previously registered Trademark if you are no longer using it in commerce.  To this end, the USPTO shifts to the burden of proof to the applicant and requires:
1. The applicant to submit a Section 8 filing, or a Declaration of USe between the 5th and 6th-year, after the trademark registration was issued
2. Submit a Section 9 Filing, or a renewal of registration, between the 9th and 10th year after the registration was issued – every 10 years thereafter

The Declaration of Use Requirement

 

Keep Everything Documented

Remember, the United States Patent and Trademark Office (USPTO) absolutely hates waste and does not want an individual to claim rights to a trademark that is no longer in use.  Therefore, one must both initially obtain a trademark registration and keep the trademark registration by periodically declaring to the USPTO that the mark is still being used in commerce.  The applicant is required by the USPTO to submit a Declaration of Use no later than the 6th year post-registration, then once again prior to the ten year anniversary, and on a recurring basis, every ten years after.

 

What is a Trademark Declaration of Use

Section 8 of the Lanham Act (15 USC Section 1058) set forth the precise requirements of the Declaration of Use mandate and address the fundamental need for the applicant to demonstrate to the USPTO that the registered trademark is still being used in commerce.  How does the trademark holder demonstrate to the USPTO that the mark is still being used in commerce? By swearing use and providing a specimen, proving use.

 

Steps to Submit a Trademark Declaration of Use

  1.  Contact a Trademark Lawyer and discuss the nature of your application and the timeline of when it was first filed, first issued etc.
  2.  Provide the Trademark Lawyer with your trademark registration number, the original specimen of use, and the current specimen showing Use if different
  3. The Trademark lawyer will fill out the Registration Maintenance and Renewal Form on the USPTO website and with your consent, execute the declaration of use asserting the trademark’s continuous use in commerce for the initially declared goods
  4. The Trademark Lawyer will pay the USPTO filing fee on your behalf and submit the application forms

Timing Matters for Trademark Applications

 

I missed the Filing Dates: Is it too late?

The short and direct answer is yes.  If you miss the submission date, your mark will be abandoned. However, the USPTO may accept petitions to file after the submission date has passed in certain circumstances. Contact your Trademark Lawyer to find out if you qualify.

 

Does the Declaration of Use Filing Cost Money?

Unfortunately, the answer here again is Yes. The USPTO charges money to process and review the filing.

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