Maintenance and Renewal of U.S. Trademark Registrations

by Ladas & Parry LLP
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U.S. trademark registrations automatically lapse if they are not maintained or renewed at the appropriate times.  The registrant must, at a minimum, submit an affidavit of use (or excusable non-use) of the mark in U.S. Commerce with acceptable evidence of such use for at least one item in each class of goods and services:

  1. between the fifth and sixth anniversary of the registration date,
  2. between the ninth and tenth anniversary of the registration date, and
  3. every 10 years thereafter to keep the registration active.

The registrant may belatedly file the relevant documents and evidence at additional cost during a 6-month grace period following each deadline.  Except in very rare circumstances, it is not possible to maintain or renew a registration after the belated deadline.

The appropriate step in maintaining or renewing the registration depends on whether the registrant (or its licensee(s)):

  • has used the mark on all of the goods/services in the registration;
  • has used the mark on only some of the goods/services in the registration;
  • has not used or has ceased use of the mark in relation to any of the goods/services in the registration and cannot point to special circumstances that prevented it from doing so; or
  • has not used or has ceased use of the mark in relation to any of the goods/services in the registration and can point to special circumstances that prevented it from doing so.

The sections below address each of these circumstances separately.

Use on All Goods/Services in the Registration

When the registrant is using the mark on all of the goods/services identified in the registration, the registrant may submit an Affidavit of Use if it can meet the following requirements:

  1. Specimen(s): The applicant must provide at least one acceptable sample(s) showing use of the mark for each class of goods/services covered by the registration.
    • A proper use specimen for goods (Classes 1-34) must show the mark affixed on the outside of the goods or packaging or on a point of sale display associated with the goods.
    • A proper use specimen for services (Classes 35-45) must show the mark used in the sale of the applied-for services, which includes use in the course of rendering the services, or in advertising the services.
  2. Identification of covered goods/services: The applicant must confirm that the affidavit of use is intended to cover all of the goods/services in the registration.1
  3. Oath and Signature: The applicant or a properly authorized person must sign an oath swearing under penalty of perjury that the mark is used in U.S. Commerce, in relation to all of the goods and services listed in the registration as of the date of its filing.2
  4. Fee: Official Fees per class must be paid.  The fees depend on:
    • whether the submission is for maintenance (by the sixth anniversary of the registration) or renewal (every 10 years following registration);
    • for maintenance filings, whether the submission includes a Declaration of Incontestable Status;
    • for renewal filings, whether the submission pertains to a national registration or a registered extension of an International Registration that has been separately renewed in the World Intellectual Property organization;
    • whether the submission is made on time or during the 6-month grace period.

Even where a registrant has provided the requisite minimum acceptable evidence of use, the USPTO may subsequently require additional evidence of use in relation to goods or services it specifically selects under the auspices of its audit program.  More details on the USPTO audit program are available here.

Footnotes

  1.  See section entitled “Use on Some of the Goods/Services in the Registration” if the mark is used on only some of the goods and services.
  2. The USPTO will generally rely on the sworn attestation that the mark is in use in the United States as of the date submitted.

Non-Use on Any of the Goods/Services in the Registration absent Special Circumstances

When the registrant is not using the mark on any of the goods/services identified in the registration, and the registrant cannot point to special circumstances which might excuse its non-use, it must generally allow the registration to lapse.  The registrant can file a new application, and possibly continue to defer use by basing it on an intent to use or on a home country registration.  Of course, if a third party has sought to register a similar mark in the interim, there is a risk that a new application may be refused.

If the reason for non-use is that the goods/services have become technologically obsolete, it is sometimes possible to update the identification and submit an affidavit of use in relation to the updated goods/services under a special USPTO pilot program.  More information on updating technologically obsolete goods/services under the USPTO pilot program in relation to a sample industry is available here.

Special Circumstances Surrounding Non-Use on Any/Some of the Goods/Services in the Registration

When the registrant is not using the mark on any of the goods/services identified in the registration typically for reasons beyond the registrant’s control, it may still be possible to maintain/renew the registration without evidence of use under a claim of “excusable non-use” if the registrant can meet the following requirements:

  1. Declaration of Excusable Non-Use: The registrant must provide a statement of the facts and special circumstances that it considers to excuse its non-use of the mark as registered in relation to the goods/services and confirm that it does not intend to abandon the mark. The declaration must:
    • State the factual basis for the excuse;
    • Set forth the date when use of the mark in commerce stopped;
    • Set forth the approximate date when use in commerce is expected to resume;
    • List the specific steps being taken to put the mark back in use; and
    • Specify the goods/services for which excusable non-use is claimed, including deletion of any goods/services for which there is no use and to which the excuse does not apply.
    • Examples of acceptable excuses for non-use include the following:
      • Trade embargo
      • Sale of business
      • Retooling of a plant or equipment essential to production
      • Orders on hand for products that cannot be produced quickly or in large quantities
      • Illness, fire, or other catastrophes, provided that the business could not operate in the absence of key personnel and the registrant has outlined arrangements and plans for resuming use.
    • Examples of UNACCEPTABLE excuses for non-use include the following:
      • Business decisions
      • Decreased demand and general changes in social or economic conditions
      • Negotiations with distributors
      • Use outside of the United States
      • Use on goods/services other than those in the registration (although use on goods/services that have replaced technologically obsolete goods/services in the registration may allow for the registration to be updated under a USPTO pilot program and thus constitute use of the mark)
      • Use of a materially different mark
  2. Oath and Signature: The applicant or a properly authorized person must sign an oath swearing under penalty of perjury to the facts asserted in the Declaration of Excusable Non-Use.
  3. Fee: Official Fees per class must be paid.  The fees depend on:
    • whether the submission is for maintenance (by the sixth anniversary of the registration) or renewal (every 10 years following registration);
    • for renewal filings, whether the submission pertains to a national registration or a registered extension of an International Registration that has been separately renewed in the World Intellectual Property organization; and
    • whether the submission is made on time or during the 6-month grace period.

Use on Some of the Goods/Services in the Registration

Where the registrant has used the mark in U.S. Commerce on only some of the goods/services identified in the registration, the registrant may file an affidavit of use in relation to the goods/services for which the mark is in use (outlined in an earlier section, entitled “Use on All Goods/Services in the Registration”), and:

  1. Permanently delete the goods/services for which the mark is not in use (Not doing so may increase the likelihood of a USPTO audit or raise risks associated with a third party challenge to the registration);
  2. Include a declaration of excusable non-use for those goods/services for which the registrant is not using the mark due to special circumstances (outlined in an earlier section, entitled “Special Circumstances Surrounding Non-Use on Any/Some of the Goods/Services in the Registration”); and/or
  3. File a new application based on intent to use or a home country registration for the mark in relation to the good/services not in use.

[View source.]

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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