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How to Maintain Your Trademark Registrations

This article explains filing deadlines and document requirements for maintaining federal trademark registrations with the U.S. Patent and Trademark Office (“USPTO”). The documentation for establishing proof of continued use of your mark, registration renewals and establishing the incontestability of your mark are all explained in this first article of the series. Special requirements for international registrations will also be discussed.

Trademarks may be a business entity’s most valuable intellectual property. Trademark owners in the U.S. must take specific actions to maintain a registration or they may lose valuable intellectual property rights. Optional filings may be submitted by a trademark owner to enhance those rights. We will discuss the requirements and timing for those measures. The list of filings includes:

  • Affidavit of Continued Use under Section 8 or 71, which provides the statutory proof of continued use (or Excusable Nonuse).
  • Renewal Application under Section 9
  • Affidavit of Incontestability under Section 15
  • Corrections and amendments
  • Assignments where there are changes in ownership

U.S. trademark rights are derived from the actual or intended use of a mark, and not simply by registration. Registration on the Principal Register conveys to a trademark owner certain statutory rights and privileges beyond the right of exclusive use that attaches to trademark ownership. These rights include:

  • Prima facie evidence of validity and the registrant’s ownership of the mark.
  • Presumed exclusive right to use the mark nationwide.
  • Constructive notice to third parties of the registrant’s rights.
  • Federal court subject matter jurisdiction over infringement and related unfair competition claims.
  • The right to use the ® symbol and other notices of federal registration.
  • Statutory remedies for federal trademark infringement claims, including under certain circumstances, treble damages and recovery of attorneys’ fees and costs.

A trademark owner who registers a mark with the USPTO must take affirmative steps to maintain that registration or risk forfeiting the registration benefits that may have taken many years and significant expenditures to acquire.

To keep a federal trademark registration in force, the trademark owner must periodically file the following documents, along with their required fees, an Affidavit of Continued Use or Excusable Nonuse must be filed between the 5th and 6th year, and again between the 9th and 10th anniversary of the registration. The fee (currently $100) must be enclosed along with a specimen of the mark as it is currently used for each class of goods or services.

A renewal application must be filed every 10 years under Section 9.  The USPTO provides electronic forms for these and other filings relating to maintaining a trademark registration.  Failure to make these filings results in the loss or limitation of the benefits of registration. The USPTO cancels a registration that is not renewed.

In our next article we will explain the affidavits and specimens that a trademark owner is required to submit in order to maintain its trademark registration.

 

Intellectual Property William P. Smith
412.325.1115
wsmith@spilmanlaw.com