Trademark Management – Maintenance of a Trademark Registration
Trademark registrations can survive indefinitely, as long as they are maintained. An owner of a trademark registration must periodically file paperwork with the Trademark Office to ensure that the registration is not canceled. Over the life of the trademark registration, the owner – or trademark registrant – will likely make Section 8, 9, and 15 filings.
A §8 filing is a declaration of continued use. It is a statement made to the Trademark Office swearing that the mark is still in use. A §15 filing is a request that the mark be declared incontestable, which immunizes the mark from certain types of post-registration attacks. While the §8 filing is mandatory to keep the registration alive, the §15 filing is option. The registrant must file the §8 declaration of continued use between the fifth and sixth years of registration attesting that it is continuing to use the mark properly. There is a six-month grace period following this deadline during which the declaration can be submitted along with a late-fee surcharge. However, failure to file the §8 declaration will result in the cancellation of the registration. The registrant can also file the §15 declaration of incontestability as early as the fifth year of registration, if the mark has been continuously used for five years. Doing so will render the trademark registration incontestable on a number of bases.
A trademark registration must also be renewed every ten years. This is done by filing the §9 application for renewal between the ninth and tenth anniversaries of registration and then again during each successive ten-year period thereafter. Moreover, when a §9 filing is made, a §8 declaration of continued use must also be submitted. There is a six-month grace period following this deadline during which the trademark registrant can submit the §8 and §9 documents along with a late-fee surcharge. Failure to timely make the §8 and §9 filings will result in cancellation of the registration.
Keeping track of maintenance deadlines is often not easy for the trademark registrant because of the long spans of time between filings. Our firm uses a dedicated trademark docketing system to calendar and potentially remind clients of deadlines before they close. We routinely handle all types of post-registration filings. Contact the firm at the phone number above in red if you are in need of trademark maintenance or portfolio management.