Required Trademark Maintenance Filings
Federal trademark registrations require the following post-registration filings to remain active:
- Section 8 Declaration of Continued Use (between years 5 and 6). A verified statement that the mark is still in use in commerce in connection with the registered goods or services. This first maintenance filing must be submitted in the one-year window between the 5th and 6th anniversary of the registration date.
- Combined Section 8 and Section 9 filing. To keep the trademark alive indefinitely, you must file a combined Declaration of Use (Section 8) and an Application for Renewal (Section 9) every ten years. The first of these combined filings is due in the one-year window between the 9th and 10th anniversary of the registration date, and subsequently between the 19th and 20th years, 29th and 30th years, and so on.
All of these filings require a current specimen showing the mark in actual use in commerce, as well as a verified declaration of continued use.
Incontestability Status
After five years of continuous, exclusive use following registration, a trademark owner can file a Section 15 Declaration of Incontestability. This is an optional but valuable filing that significantly strengthens the legal status of the registration. An incontestable mark cannot be challenged on certain grounds, including descriptiveness, that would otherwise remain available to challengers. Filing for incontestability should be considered a standard part of post-registration strategy for any mark of commercial importance.
Consequences of Missing a Maintenance Deadline
The USPTO provides a six-month grace period after each maintenance deadline, during which late filings can be made with a surcharge. If no filing is made during the grace period, the registration is cancelled or expired and cannot be revived through the maintenance process. A cancelled registration loses all of its legal presumptions and benefits, and you would need to file a new application, with a later priority date, to attempt to re-register the mark.
Proper Use of the Mark
Maintaining registration also requires that you continue to use the mark properly in commerce. Improper use, such as using the mark in a way that differs significantly from the registered form, failing to use it on all of the registered goods and services, or allowing others to use it without proper quality control in a license relationship, can create vulnerabilities that enable third parties to seek cancellation of the registration on grounds of abandonment or naked licensing.
How Five Dogs Law Handles Trademark Maintenance
Five Dogs manages the full maintenance lifecycle, tracking deadlines, preparing and filing the necessary declarations and renewals, advising on proper use, and handling any questions that arise during the process. Jared will also assess whether your registration is a candidate for incontestability status and handle that filing as part of the overall maintenance strategy.
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