Knowing When and Why to Maintain Your Trademarks

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Just like a vehicle, your trademark requires regular maintenance.  To maintain a trademark, the owner must complete and submit certain filings and fees with the United States Patent and Trademark Office (USPTO) at specified intervals.  Failing to submit these filings and fees will result in cancellation of the trademark by the USPTO.

When Are Maintenance Filings Due?

All trademark maintenance filing deadlines are measured from the date that the mark was officially registered with the USPTO.  The initial maintenance filings must be completed between the fifth and sixth years of registration and subsequent filings are completed once every ten years.

The USPTO requires the owners of registered trademarks to file an Affidavit of Use between five and six years after registration.  After this initial filing, a trademark owner must submit an additional Affidavit of Use before the end of every ten year period. Additionally, at the end of every ten year period, a trademark owner must file a Renewal Application.  All maintenance filings have a six month grace period where the filings may still be completed, but at a higher price.

If at any point after registration you have been using your trademark continuously for five years, you may also file a Declaration of Incontestability. While this is not mandatory, it can be extremely beneficial.  After a Declaration of Incontestability, your mark’s registration is now conclusive evidence that the mark is valid, that you own the mark and that you as the owner have the exclusive right to use the registered mark with the goods or services on the registration in commerce.

Why Should Maintenance Filings Be Completed?

There are many reasons why trademark maintenance filings should be completed on a regular basis.  Below are just a few examples of the most important reasons.

Protect Your Trademark Rights And Maintain The Advantages of Registration. After going through the process of registering your trademark, you will likely want to retain the advantages of registration, such as:

  • notice to the public of your ownership of the mark;
  • presumption of ownership of the mark and the exclusive right to use the mark nationwide on or in connection with the goods and/or services in the registration;
  • the ability to file suit regarding the trademark in federal court;
  • the ability to obtain registration in foreign countries; and 
  • the ability to use the U.S. Customs Service to prevent the importation of infringing foreign goods.

Strengthen Your Mark. A Declaration of Incontestability should be filed with the initial maintenance filings between the fifth and sixth years or as soon as you have five years of continuous use.  Completing this filing will make it far more difficult for others to challenge the registration, ownership or your rights to use the mark in cancellation proceedings. Additionally, the declaration of incontestability can assist you in policing your mark against infringers.

Prevent Cancellation. If the Affidavit of Use and Renewal Applications are not filed in a timely manner, the registration will be cancelled.  Registrations that are cancelled because of a failure to file an Affidavit of Use and/or a Renewal Application cannot be revived or reinstated.

Prevent Trademark Poaching. If you do not file the Affidavit of Use, Renewal Application or Declaration of Iincontestability, not only can your mark be cancelled, but once the mark is cancelled, any other person could apply for and obtain ownership of the same or a similar mark.

If you continue to use your trademark, we strongly advise you to complete your maintenance filings at the required time.

Topics:  Filing Fees, Filing Requirements, Trademarks, USPTO

Published In: General Business Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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