Preface
This brief note is not legal advice and is for educational purposes only.
After your trademark (mark) registration is granted (on the registration date noted on the mark certificate) you still need to do periodic maintenance to maintain the trademark and avoid cancellation or abandonment. Unlike a patent or copyright, a trademark can last forever.
Section 8 – of the Lanham Act (15 U.S.C. § 1058) declaration of use requires that for a registration to remain in force between the 5th and 6th year after registration, and between the 9th and 10th year after registration, and thereafter between the (n*10th)-1 and n*10th year where n>=2 after registration these need to be filed
- Specimens showing current use of the mark in commerce on the goods/services
- an affidavit stating the mark is in use in commerce
- Fees
There is generally a 6 month period after each of the deadlines in which a surcharge may be paid and the filings made and/or corrected.
Note that if goods/services are NOT being used they should be dropped from the registration.
Section 9 – of the Lanham Act (15 U.S.C. § 1059) provides for renewal of registration for an additional 10 years (subject to Section 8). The renewal application and fee need to be paid within (m*10th)-1 and m*10th year where m>=1. With a surcharge it may be paid up to 6 months late.
Section 15 – of the Lanham Act (15 U.S.C. § 1065) provides for incontestability of a mark on the principal register. It requires that the mark has been in continuous use for 5 consecutive years subsequent to registration, is still in use, there are no final decisions adverse to the mark, no pending proceedings (in the USPTO or courts), and a affidavit filed within 1 year of the 5 consecutive years of continuous use.
Clearly some of these deadlines coincide and so there are some combined forms that can be filed.
| Time 0 | 5-6 year | 9-10 year | 19-20 year | ... repeat every 10 years | ||||
|---|---|---|---|---|---|---|---|---|
| Date of Registration | File Section 8. (Earliest that Section 15 can be filed.) | File Section 8 and 9. | File Section 8 and 9. | ...File Section 8 and 9. | ||||
| You must file at each time period (no catchup). | Section 15 can be filed at any time after the first 5 consecutive years of continuous use. | |||||||
| Most of the deadlines have a 6 month surcharge period. | ||||||||
Conclusion
These are the post registration deadlines that are important to keep in mind. They are not the only things that must be done to maintain a mark. For example, policing the mark, proper marking, quality, avoiding genericide, etc. Also incontestability provides some benefits. Should you blow past these deadlines – you still might have some rights. Consult your attorney
