Maintaining A Trademark Once It Has Been Registered
Federally registering a trademark can be an exciting step for a brand. Registration provides protections, and registering on a federal level encourages entrepreneurs to envision seeing their brand become a household name one day. However, the registration and visions of fame come with responsibilities. The main responsibility attending a trademark is maintaining it. Registration is the first step, but there are several other things that must be done to maintain a trademark. If you have registered, or are thinking of registering, your trademark, and have questions regarding maintaining a trademark, an experienced Washington, D.C. trademark attorney with War IP Law PLLC may be able to answer your questions. Call (202) 800-3754 for a consultation to go over your trademark needs.
How Do You Keep a Trademark Active?
Once a trademark has been registered with the United States Patent and Trademark Office (USPTO), the trademark owner is required to keep the trademark active. If they do not, they may lose rights or even lose their rights to use the trademark completely.
Fortunately, there are two things that are required to keep a trademark active, according to the USPTO. The first step to maintaining a trademark and keeping it active is to use it in commerce. As long as the trademark owner is actively using it on their products or services, this requirement is met. The second step is to file the appropriate renewal documentation at the required intervals to show continued use and renew the mark. This trademark renewal process involves filing specific forms, including a specimen of the goods the trademark is used for, and paying a set fee. The USPTO clearly indicates which forms need to be filed and when, but it is the trademark owner’s responsibility to keep track of when they need to file their renewal paperwork.
Can a Trademark Be Maintained Forever?
The USPTO says that an uncontested trademark’s registration is valid as long as all post-registration documents are filed at the appropriate times. Therefore, maintaining a trademark forever is possible. Ownership of the trademark can be transferred upon the original trademark owner’s death, or if they sell the business or brand associated with the trademark. There are specific forms that can be filed with the USPTO in those instances. If you need assistance with transferring ownership of a trademark, the experienced intellectual property attorneys at War IP Law PLLC may be able to assist you.
In order to keep the registration valid and potentially maintain the trademark forever, a “Declaration of Use under Section 8” form must be filed between the fifth and sixth year after the trademark is registered. A “Declaration of Use and Application for Renewal under Sections 8 and 9” must be filed between the years nine and ten after registration and every 10 years after that. If these documents are filed, and nothing else happens that would cancel the registration, the trademark will be maintained. If these documents are not filed, the registration will be canceled and, depending on the circumstances, may not be eligible for reinstatement.
Do I Have To Renew My Trademark Every 5 Years?
The answer to this question is both yes and no. Initially, the first two renewals are five years apart, between the fifth and sixth year and ninth and tenth year. However, after those initial renewals, trademark owners are only required to renew their trademark every 10 years.
The first of these filings, due between the fifth and sixth year, is not technically a renewal. This filing is actually a maintenance filing. From the standpoint of technical terminology, the first renewal is the paperwork due between the ninth and tenth year. However, if either of these is not filed, the lapse can result in the trademark being canceled.
What Happens if I Don’t Renew My Trademark?
Maintaining a trademark requires renewing it at the appropriate intervals. Renewals can be filed beginning on the anniversary of the date the trademark was registered, and must be filed the day before the anniversary of that registration date the following year. A trademark owner whose trademark was registered on June 1, 2023, can file the trademark renewal that is due between the ninth and tenth year beginning on June 1, 2032, and ending May 31, 2033. If the mark is not renewed during that, it may be considered dead.
However, there is a six month grace period after the expiration that allows the trademark owner to pay an extra fee and renew the trademark. Additionally, as the prior owner of the mark, the owner may be able to claim the dead trademark and re-register it for a period of time. Once three years have passed with no activity, the trademark is considered to be presumptively abandoned. At this point, someone else may be able to register the same mark, or one closely similar to it. The longer that the mark appears to be abandoned, the higher the chances that someone else will be able to register that mark or one similar. The new registration would then prevent the owner of the formerly registered trademark from being able to revive their mark.
Are There Any Other Requirements To Maintain a Trademark?
The two main requirements are actively using the trademark and filing the appropriate renewal and maintenance paperwork on time. However, within the requirement to file the appropriate maintenance paperwork are a few other minor requirements. These include:
Deleting goods or services no longer used promptly: When filing the required maintenance paperwork, trademark owners should delete any goods or services on which they no longer use the trademark. Between maintenance filings, however, they should file a section 7 request to delete those goods or services.
Requesting an exception if not using the trademark: While exceptions are rarely granted, if a trademark owner is not using the trademark and can show that it is due to circumstances beyond their control and they do not intend to abandon the trademark, they may be able to get a temporary exception from the use requirement.
Updating ownership information: If the business has been sold, the original trademark owner has died, the business changed its name, or the ownership information is incorrect for another reason, the appropriate form must be filed to update the information.
Filing a declaration of incontestability: This document is not required, but trademark owners can file it once their trademark has been in continuous use for five years. Per the United States Patent and Trademark Office, this makes it impossible for third parties to contest the validity and certain other aspects of the trademark.
Are You Uncertain About the Requirements for Maintaining a Trademark?
While the steps to maintaining a trademark may seem simple enough at first glance, they can be much more involved and time-consuming than business owners might realize initially. There are many dates to remember, forms to fill out, and pieces of information that must be confirmed or updated. If you have questions regarding how to maintain a trademark, or would like to discuss how an attorney may be able to handle trademark maintenance on your behalf, the knowledgeable Washington, D.C. trademark attorneys with War IP Law PLLC may be able to assist you. Call (202) 800-3754 to learn more.
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