How to Maintain Your Federal Trademark: An Overview
Congratulations! Your trademark has officially been registered and your brand is now protected from would-be infringers. Now what? Well, trademark registration isn’t where protecting your brand ends. Whether on the Principal or Supplemental Register, you still have to maintain your federal trademark registration. Maintenance looks like continuing to use your mark in commerce, enforcing your rights, and maintaining your registration. Today, we are going to focus on maintaining your registration. For your trademark to remain registered, you must make regular filings at specific intervals post-registration – 5-6 years after registration and every 10 years.
Section 8 Declaration
Before the end of the sixth year after your initial registration, but not before the fifth year, you are required to file a Section 8 Declaration. This is considered a “Declaration of Use.” Similar to the Statement of Use you were required to file prior to registration, you will be required to provide a statement of use as well as evidence of use of the mark in commerce. You have a six-month grace period past the six-year deadline. Deadlines are the most important aspect of maintaining your federal trademark. If you miss this mandatory deadline, your trademark will be canceled, and you will have to start the entire federal trademark registration process again.
Also, during this time, you can file a Section 15 Declaration. While this is not mandatory in order to maintain your federal trademark, it is still very important. A Section 15 Declaration is called a Declaration of Incontestability. If your mark is registered on the Principal Register and has been in use for a minimum of five years after registration, this declaration can give you added protection for your mark. Generally, if your mark becomes incontestable, it cannot be challenged by third parties. Game-changer, right? I know! Just note, if your mark is on the Supplemental Register, it cannot gain uncontestable status.
Not using your mark? That’s fine too. You may be able to file a Declaration of Excusable Nonuse. A Declaration of Excusable Nonuse is necessary if your trademark has registered but is not being used in commerce. Generally, marks that are not in use are not and cannot be protected. However, this declaration allows you to explain your nonuse and detail any steps you are taking to get your mark back into commerce.
Section 9 Renewal
Between the nineth and tenth year after your registration date, and every tenth year thereafter, you will be required to file both a Section 8 Declaration and a Section 9 Renewal. In this process, you will be declaring that your mark is being used in commerce, showing proof of such, and asking the USPTO to renew your registration for another ten years. It is considered a “Combined Declaration of Use.” Still not using your mark? Don’t worry! You can still file a Declaration of Excusable Nonuse while renewing your trademark. The USPTO requires details an explanation for why you are not using your mark. Not all marks in nonuse will be allowed to proceed. Your nonuse must be “excusable.” If the USPTO doesn’t agree that the nonuse is excusable or has further concerns, it will issue an Office Action.
Again, it is important to note that this 10-year deadline is mandatory. If you miss this deadline, or the six-month grace period deadline, your trademark will be canceled, and you will have to start the entire federal trademark registration process from the beginning.
Now that you’ve identified and protected your brand through federal registration, come back next month when we discuss how contracts can reinforce this protection. Learn more about the federal trademark registration process here.