I have a Trademark, Now What?

Congratulations you’ve successfully secured a federally registered trademark for your business, blog, or creation!!!  

Go ahead and celebrate but remember this is not the end of your obligation. In addition to policing or searching for unauthorized use of the brand, you must maintain your trademark rights with the United States Patent & Trademark Office (USPTO). 

Trademarks require regular maintenance to continue to enjoy the use and protection of the mark. As the owner, you must complete and submit certain filings and fees with the USPTO at specified intervals.  Failing to submit these filings and fees will result in cancellation of the trademark by the USPTO. Additionally, there is an extra filing option that can further strengthen your protection. Knowledge of these intervals and timely adherence to the deadlines are a major part of maintaining a strong mark.

Required Maintenance Filings

All trademark maintenance filing deadlines are measured from the date that the mark was officially registered with the USPTO. There are two required filings, the Affidavit of Use and the Renewal Application.

Affidavit of Use – The USPTO requires the owners of registered trademarks to file an Affidavit of Use between five and six years after registration to prove continuous use of the mark in commerce.  After this initial filing, a trademark owner must submit an additional Affidavit of Use before the end of every ten year period.

Renewal Application – Additionally, at the end of every ten year period, a trademark owner must file a Renewal Application.

**Warning: If the Affidavit of Use and Renewal Applications are not filed in a timely manner, the registration will be cancelled.  Registrations that are cancelled because of a failure to file an Affidavit of Use and/or a Renewal Application cannot be revived or reinstated.

Timing: As you can see, the initial maintenance filings must be completed between the fifth and sixth years of registration and subsequent filings are completed once every ten years.

** Warning: All maintenance filings have a six month grace period where the filings may still be completed, but at a higher price.

Cost:  Renewal Applications are $400 per class. The additional fee for filing during the grace period is $100. Filing Affidavits are priced between $100 – $200. The additional fee for filing during the grace period is $100.These prices are subject to change so consult the USPTO.gov website for current pricing.

How to file:

  1. Visit the USPTO site and navigate to “Registration Maintenance/Renewal/Correction Forms”.
  2. Navigate to Declaration of Use and/or Excusable Nonuse of a Mark under Section 8 or Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal under Sections 8 & 9 if you are filing both at the same concurrently.
  3. You must supply your registration number, then answer questions as to who is filing the declaration
  4. You must provide information as to the entity that owns the mark
  5. You must upload a specimen showing the mark as used in commerce
  6. You must execute the declaration as to whether the marks have been in continuous use on the same goods or services as originally declared when the applications was file. If not, you must supply the appropriate information.
  7. You must provide electronic signature
  8. You must pay for filing

Recommended Additional Filing

Declaration of Incontestability – This filing while not mandatory is extremely beneficial in defending and protecting your trademark rights.  A Declaration of Incontestability will make your mark’s registration conclusive evidence that the mark is valid, that you own the mark and that you as the owner have the exclusive right to use the registered mark with the goods or services on the registration in commerce.

Timing: A Declaration of Incontestability should be filed with the initial maintenance filings between the fifth and sixth years or as soon as you have five years of continuous use.

Cost: $300 per class. The additional fee for filing during the grace period is $100.

How to file:

  1. Visit the USPTO site and navigate to “Registration Maintenance/Renewal/Correction Forms”.
  2. Choose 2. Declaration of Incontestability of a Mark Under Section 15 (unless you plan on filing a combination declaration including Section 8).
  3. You must supply your registration number, then answer questions as to who is filing the declaration
  4. You must provide information as to the entity that owns the mark
  5. You must execute the declaration affirming incontestability (see above).
  6. You must provide electronic signature
  7. You must pay for filing.

Protect your investment and make sure you keep up with your maintenance fees! Consult an attorney for help with the filings.

 

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