After registration of a federal trademark, the mark owner must meet several important maintenance deadlines. Failure to comply with required post-registration trademark maintenance filings will result in cancellation of the trademark.
On January 27, 2015, the USPTO began sending courtesy e-mail reminders of upcoming post-registration trademark maintenance filings to those who had a valid email address on file that had consented to electronic communications. If you do not receive your reminder email, if it goes to junk mail, or if the USPTO simply fails to send the reminder, it does not excuse your statutory obligations to file the required trademark maintenance documents. Therefore, it is incredibly important that owners of a federal trademark be proactive in meeting their required maintenance deadlines.
You must file a Section 8 Affidavit of Use between the fifth and sixth year following your registration. If you miss this deadline, the USPTO does allow for a six month grace period following the end of the sixth year; however, there is an additional fee per class for filing during the grace period. To find your mark’s registration date, you may either check the online Trademark Electronic Search System (“TESS”) or your registration certificate. Your five year window begins five years from your registration date.
If you have continuously used your mark in commerce for the five year period preceding your renewal window, then you should be filing a combined declaration of use and incontestability. The USPTO provides a combined form for both the Section 8 Affidavit of Use and the Section 15 Declaration of Incontestability. Although the Section 15 Declaration is not a required trademark maintenance filing, I highly recommend filing one, as it confers certain evidentiary benefits. If you are involved in trademark infringement litigation, having an incontestable mark limits many legal challenges that a litigant would normally be able to raise.
At each ten year period after registration of your mark, you must file a Section 9 Declaration of Continued Use and Section 8 Application for Renewal. The USPTO offers a combined form for this filing. There is also a six month grace period at the end of the tenth year, but it will cost you an additional fee per class to file within the grace period. The second renewal filing will be due between the ninth and tenth year following your initial registration date. After the ten year renewal, you must file a subsequent renewal for each ten year period: twenty years, thirty years, and so on.
For more information regarding our trademark maintenance attorneys, please contact Kennedy Law, P.C. today.
Chelsie Spencer is a Senior Associate with the Dallas office of Kennedy Law, PC. She may be reached at 214-716-4345.