Maintaining and renewing U.S. trademarks

Maintaining and renewing U.S. trademarks

  • 01 May, 2024
  • Nyall Engfield

A company's trademark attorney was rushing to renew their biggest trademark on the final day before it expired. She quickly filled out the online renewal form, attached the required documents, and clicked "Submit" with just minutes to spare.

To her horror, instead of a confirmation message, a pop-up appeared: "Error 404: Trademark Not Found."

Turns out she had accidentally renewed "Smunchy Crunchies" instead of their signature "Crunchy Munchies" snack brand!

Talk about a trademark renewal that really got... munched up!

Maintaining and renewing U.S. trademarks

Maintaining and renewing U.S. trademarks is crucial to ensure the continued protection of your trademark rights. Here's an overview of the process, timing, potential pitfalls, and ways to extend the time:

  1. Overview of Trademark Renewals:

    • U.S. trademark registrations are valid for 10 years from the date of registration.
    • To maintain the registration, you must file specific maintenance documents and fees at regular intervals.
    • Failure to meet these requirements can result in the cancellation or expiration of your trademark registration.
  2. Timing and Requirements for Maintenance:

    • Between the 5th and 6th year after registration: You must file a Declaration of Use or Excusable Nonuse (Section 8 Declaration), along with a specimen showing continued use of the mark.
    • Section 8: Declaration of Continued Use or Excusable Nonuse

      A Section 8 filing is essentially a declaration of continued use (or excusable nonuse) of the trademark in commerce. This is a mandatory filing that must be made to keep the trademark registration alive. The key points about Section 8 are:

      • Timing: It must be filed by the owner of the registration at the end of the 6th year after registration, and then again at the end of each subsequent 10-year period.
      • Purpose: The filing attests that the trademark is still in use in commerce on the goods/services listed in the registration, or that any nonuse is excusable.
      • Documentation: The owner must submit a specimen showing the use of the mark in commerce along with the declaration.
    • Between the 9th and 10th year after registration: You must file a Combined Declaration of Use and Application for Renewal (Section 8 and 9), along with a specimen and the renewal fee.
    • Section 9: Application for Renewal

      A Section 9 filing is an application for the renewal of the trademark registration. This filing ensures that the trademark registration is extended for an additional 10 years. The details of Section 9 are:

      • Timing: This filing is due at the end of each 10-year period following the date of registration.
      • Combined Filing: Often, Section 8 and Section 9 filings are submitted together as a combined filing at the 10-year renewal period.
      • Continued Protection: Renewal under Section 9 confirms the owner’s continued interest in protecting the trademark and extends the protections afforded by registration.

      Both filings are crucial for maintaining a trademark registration in good standing and preventing its cancellation. Failure to timely file these declarations can result in the cancellation or expiration of the trademark registration, potentially leaving the mark without federal protection.

    • After every 10-year period following the initial renewal: You must file a Renewal Application and pay the renewal fee.
  3. Potential Pitfalls:
    • Missing the filing deadlines: Failing to file the required documents and fees within the specified time periods can lead to the cancellation or expiration of your trademark registration.
    • Improper specimens: Providing inadequate or unacceptable specimens of use can result in refusals or delays in processing your maintenance filings.
    • Changes in use: If you have significantly changed the use of your mark or the goods/services associated with it, you may face challenges in maintaining your registration.
    • Non-use issues: If you have not used your mark for certain goods or services, you may need to delete those items from your registration or provide an acceptable excuse for non-use.
  4. Extending the Time:
    • Grace Periods: The USPTO allows a 6-month grace period after each maintenance deadline, during which you can still file the required documents and fees, but with an additional surcharge. Currently, the surcharge is $100 per class.
    • Filing Extensions: In certain circumstances, you may be eligible to request an extension of time to file the maintenance documents, typically for an additional 6 months.
    • Excusable Nonuse: If you have a legitimate reason for not using your mark, such as special circumstances beyond your control, you can claim "Excusable Nonuse" and potentially maintain your registration. Excusable nonuse of a trademark refers to situations where a trademark owner has not used the mark in commerce but can justify this nonuse due to special circumstances without any intention of abandoning the mark. Common reasons for excusable nonuse include unforeseen challenges such as natural disasters, regulatory delays, or other disruptions that are outside the control of the trademark owner. To claim excusable nonuse, the owner must file a declaration with the United States Patent and Trademark Office (USPTO) during the required maintenance periods, explaining the reasons for nonuse and affirming ongoing interest in the trademark. This declaration is critical to maintain the registration and protect the trademark from being considered abandoned.

To avoid potential pitfalls and ensure the timely maintenance of your U.S. trademark registration, it's advisable to keep track of the relevant deadlines, carefully prepare the required documents and specimens, and consider seeking assistance from a qualified trademark attorney.

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