How to Maintain Your Registered Trademark
Podcast Episode 12—Maintaining Your Registered Trademark with the USPTO
Podcast Episode Timestamps
00:00 — Topic
00:10 — Intro
00:34 — Your USPTO trademark registration must be maintained
00:54 — Continued use in commerce
01:06 — Certain documents must be filed at certain time intervals
01:19 — The time intervals for filing the required documents
01:40 — Declaration of use and/or excusable non-use
03:15 — Application for renewal and another declaration of use
03:38 — Do that again ever subsequent 10 years
03:55 — Grace period
04:11 — Consequence for failing to timely file
04:20 — Optional – declaration of incontestability
04:54 — The value of registering a trademark, and the added value of incontestability
05:50 — The exclusive infringement defenses as to the trademark’s validity post-incontestability
07:47 — Scam warning!
08:40 — Best wishes and outro
The Trademark Registration Journey
Congratulations for registering your trademark with the United States Patent and Trademark Office! But, your USPTO journey is not over. After you get a federal trademark registration you have to do a few things to prevent the USPTO from cancelling your registration. First, you have to use your mark in commerce. Under U.S. law, “use in commerce” means bona fide use of the mark in the ordinary course of trade, not just token or one-off use to reserve a right in a mark. Second, you have to file certain documents at certain time intervals to demonstrate to the USPTO that you are still using your mark in commerce. Otherwise, your registration will be cancelled or will expire. This post focuses on maintaining a U.S. federal registration with the USPTO; state and foreign registrations have their own maintenance rules.
Required Maintenance Filings (Sections 8, 9, and 71):
Between the fifth and sixth years after the registration date you must file a declaration of use and/or excusable nonuse along with a specimen demonstrating continued use in commerce for each international class for which you registered your mark. This is known as the “Section 8 Declaration of Use and/or Excusable Nonuse” for U.S.-filed registrations (Madrid-based U.S. registrations have an equivalent filing called a “Section 71 Declaration of Use and/or Excusable Nonuse.”) This declaration is a signed statement filed by the trademark owner that either: (1) the trademark is in use in commerce with the goods or services listed in the registration; or (2) the trademark is not in use in commerce due to special circumstances that legally excuse nonuse (beyond the scope of this post). As of January 2025, the USPTO charges per-class government fees for these declarations (currently $325 per class for Sections 8 and 71 if filed electronically), and these amounts can change over time, so you should always confirm the current fee schedule on uspto.gov before filing.
When you applied to register your mark, you provided a list of the goods or services with which you use the mark along with a specimen showing that usage (or, if you originally filed as “intent-to-use,” you later submitted that evidence with a Statement of Use or an Amendment to Allege Use). When you file this declaration, you have to update the list of goods and services with which you use the mark (removing anything you are no longer providing) and provide an updated specimen for each international class in which the mark is registered demonstrating an example of the current manner in which you are using the mark in commerce. A proper specimen should show the mark as used on goods (or their packaging, tags, or associated displays) that are sold or transported in commerce, or in the advertising or sale of services that are actually rendered in commerce.
The USPTO also runs a Post-Registration Audit Program. If your registration is selected for audit when you file a maintenance document, the USPTO may require additional specimens for some of the goods or services listed in the registration. If you cannot prove current use for particular goods or services, you will have to delete them. Deleting goods or services after a maintenance filing has been submitted can trigger an additional per-class deletion fee, and failing to respond to an audit or to pay required deletion fees can result in cancellation of the registration.
Between the ninth and 10th years after the registration date you must file an application for renewal along with another declaration of use and/or excusable nonuse along with a specimen demonstrating continued use in commerce for each international class for which you registered your mark. For U.S.-filed registrations on the Principal Register, this is normally done using a combined Section 8 Declaration of Use and Section 9 Application for Renewal; for U.S. designations under the Madrid Protocol, it is done with a Section 71 Declaration of Use and/or Excusable Nonuse. As of January 2025, the USPTO charges separate per-class fees for each of these filings (currently $325 per class for Section 8, $325 per class for Section 9, and $325 per class for Section 71, when filed electronically), but the exact amounts can change, so you should always check the current trademark fee schedule before filing.
Every 10 years after that (between the 19th and 20th years, 29th and 30th years, etc.) you must file an application for renewal along with another declaration of use and/or excusable nonuse along with a specimen demonstrating continued use in commerce for each international class for which you registered your mark. As with the 10-year filing, this is done with a combined Section 8 and Section 9 filing for U.S.-filed registrations, or a Section 71 filing for Madrid-based registrations. Again, the USPTO charges per-class fees for each of these filings; check the current USPTO trademark fee schedule for up-to-date amounts.
A grace period of six months is permitted following the deadline to file the applications for renewal and declarations of use during which the documents can be filed late. If you file during this grace period, you must pay an additional USPTO grace-period surcharge per class on top of the regular filing fees. If you don’t file the necessary documents by the end of the grace period, your registration will be cancelled or treated as expired.
In addition to these regular maintenance deadlines, the Trademark Modernization Act created new ex parte “expungement” and “reexamination” proceedings that allow third parties (and the USPTO itself) to challenge registrations for goods or services that were never used in commerce or were not in use at the relevant times. This is another reason it is important to keep your registration’s list of goods and services accurate and to delete anything you are no longer offering under the mark.
Optional Filing—Incontestability (Section 15):
Although not required, a Section 15 Declaration of Incontestability for a mark on the Principal Register can be a valuable filing to include along with your required maintenance filings. You may generally be able to file for incontestability after at least five consecutive years of continuous use in commerce following the registration date, so long as there is no final adverse decision concerning the mark and no pending proceeding involving your mark. In practice, many owners file a combined Section 8/15 between the fifth and sixth years after registration. Incontestability will likely be granted if there is no legal proceeding involving the trademark and there has been no prior adverse legal decisions relating to the mark.
The value of registration and incontestability. Prior to registering your mark, if there was a trademark infringement issue, you would have had the burden of proving the validity of the trademark—meaning that the mark satisfies the requirements of being a protectible trademark. After you registered your trademark, you obtained a legal rebuttable presumption as to the validity of the trademark which means the other party to the lawsuit would have the initial burden of proving that you do not own a protectible trademark. However, if your declaration of incontestability is granted, your trademark protection is further strengthened because the mark can no longer be challenged except along very narrow avenues. Incontestability doesn’t make the mark “untouchable,” but narrows the universe of validity challenges. Contesting your mark’s validity will be off limits except for one or more of the following defenses:
- Fraudulent procurement—that you got your trademark through fraud.
- Abandonment—that you abandoned your mark.
- Use of the mark to misrepresent the source of the goods or services.
- That the mark has become generic for the relevant goods or services–for example, if the public comes to use the mark as the common name for the type of product or service rather than as a brand name.
- Descriptive or “fair use” of a term otherwise than as a mark—for example, where the defendant is using a descriptive or geographic term, or its own personal name, only to describe its own goods or services or their geographic origin, and not as a trademark.
- Prior use—that the defendant used the mark before you (however they will be restricted from expanding the geographic boundaries of where they used the mark prior to you; or, at least they will be restricted from encroaching on the geographic areas in which you use your registered mark).
- Prior use and registration—similar to the “prior use” defense, above, except this is along the lines of their having a registered mark that you claim infringes on yours, but theirs was registered first.
- Use of the mark to violate United States antitrust laws.
- Functionality of the mark (applicable to trade dress trademark, i.e., distinctive physical product design when the design serves a function, such as a uniquely shaped wrench that provides greater leverage—should probably patent such innovations ).
- Equitable defenses, including laches, estoppel, and acquiescence. Here is a link to the earlier post and podcast episode on laches.
! Scam Warning !
If you or your attorney registered your mark with the USPTO, you need to remain vigilant to letters, emails, or even phone calls you receive related to your trademark. Your information will be in the public record and anyone will be able to send you mail. Now that you know maintenance filings are required, you might be tempted to respond to a letter you receive that seems official—as if it came from the USPTO or another governmental office—indicating that if you send them some money they will take care of something for you. These are usually, if not always, what I would call a scam or, at the very least, very misleading. Official USPTO emails will come from an “@uspto.gov” email address, and you can always log in to your USPTO account or check your application or registration in TSDR to confirm whether a notice is legitimate. If you’re uncertain, you should check with your trademark lawyer or go to the USPTO’s “recognizing common scams” webpage and their other guidance on misleading notices on uspto.gov.
Disclaimer: This audio and blog post are for informational purposes only and should not be misinterpreted as legal or other professional advice. If you have a legal question, you should consult with an attorney in your jurisdiction. Thank you for tuning in to Keith Law, PLLC.
(Photo by Valentin Antonucci from Pexels)
