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:
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between the fifth and sixth anniversary of the registration date,
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between the ninth and tenth anniversary of the registration date, and
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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)):
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has used the mark on all of the goods/services in the registration;
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has used the mark on only some of the goods/services in the registration;
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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
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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:
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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.
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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.
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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.
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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.
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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.
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Fee: Official Fees per class must be paid. The fees depend on:
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whether the submission is for maintenance (by the sixth anniversary of the registration) or renewal (every 10 years following registration);
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for maintenance filings, whether the submission includes a Declaration of Incontestable Status;
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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;
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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
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