One of the most common mistakes trademark owners make is neglecting to keep their trademark(s) in good standing with the United States Patent and Trademark Office (USPTO). Failing to maintain, renew and police your marks can undo all of the hard work you put into building your brand. Use this guide from the San Diego business attorneys at Gehres Law Group, P.C. to avoid a lapse in your trademark rights and ownership.
How Long Does a Trademark Last?
Contrary to widespread belief, you don’t automatically own your trademark forever once it has been registered. A trademark effectively lasts for 10 years from the date of registration, with 10-year renewal terms. However, it’s important to recognize that the USPTO will not send you any notification or reminder for renewing your trademark term.
In the age of setting automatic reminders on your personal devices, it’s not a bad idea to mark your digital calendar for five years and nine years out from your original date of registration. Why five years?
Declaration of Use (Section 8)
The USPTO requires trademark owners to file a Section 8, “Declaration of Use” affidavit under the Lanham Act. This form is to confirm that you are still actively using your mark(s), and must be filed any time between the 5th and 6th years after official registration. The fee is $125 per class of goods or services in registration. A six-month grace period after the 6th year may be obtained for an additional fee.
The Declaration of Use requires you to:
- Identify which items in the initial registration are currently being offered for sale;
- Supply a specimen of the trademark as it appears on products or in connection with services being offered for sale; and,
- Pay the applicable filing fee.
In order to fill out the form accurately, you will need your trademark(s) serial number(s), along with examples of the mark(s) being used in commerce. Simply proving they are in use is not enough; you must show proof that they are used in a business and sales capacity. The samples can be screenshots or photos taken within the past five years. Section 8 also provides an opportunity to eliminate any registered trademark(s) that are no longer being used, which will help to lower your filing fee.
Incontestability (Section 15)
Once you have owned your mark(s) for five years, they can be declared incontestable, or immune from legal challenge, by filing a Section 15 form. This form is not required, but strongly recommended to provide additional trademark protection. In order to gain incontestability, the trademark owner must prove:
- There has been no final legal decision of infringement against the mark.
- There is no pending infringement claim against the mark.
- The mark is not a generic term.
Incontestability is one of the most complex aspects of trademark law and should be discussed in depth with a business attorney.
Renewal Costs, Application and Timeframes
Between the 9th and 10th years following a trademark’s original registration date, the owner must again file a Section 8, along with a Section 9 declaration form. Section 9 is the renewal application; the fee for filing a combined Section 8 and Section 9 application is $425 per class of goods or services in registration. Again, a six-month grace period is available for an additional fee.
Section 8 and Section 9 must be re-filed every 10 years onward in order to maintain trademark rights. If no application is received, the trademark is listed as “dead” in the USPTO database, at which point the mark is not protected and must be completely re-registered in order to be reinstated as active.
Protecting Your Marks
Maintaining your trademark(s) is only one aspect of being a trademark owner; it is also important to actively defend them. This includes:
- Securing and utilizing the ® symbol to eliminate any potential claims of innocent infringement.
- Monitoring usage through Google searches.
- Establishing a companywide trademark enforcement policy.
- Enlisting a trademark watching service.
- Drafting and delivering cease-and-desist letters to infringers.
- Seeking alternative dispute resolution for trademark infringement.
- If necessary, filing a trademark lawsuit.
As you can see, a trademark is a living asset that must be nurtured and protected as such. To raise the stakes, your brand depends on your commitment to maintaining your trademarks. The best way to ensure all of your bases are covered is to hire an intellectual property law attorney.
