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 US Patent and Trademark Office!  But, your USPTO journey is not over.  After you get a trademark registration you have to do a few things to prevent the USPTO from cancelling the registration.  First, you have to use your mark in commerce.   This just means that you have to use the trademark in connection with your business—as opposed to registering it and simply sitting on it.  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. 

Required Maintenance Filings:

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 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).  The filing fee is currently $225 per international class, if filing electronically, which the USPTO encourages. 

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.  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.

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.   The filing fee is currently $525 per international class, if filing electronically. 

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.   The filing fee is currently $525 per international class, if filing electronically. 

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 at the cost of an additional fee per international class.  If you don’t file the necessary documents by the end of the grace period, your registration will be cancelled or treated as expired.

Optional Filing—Incontestibility:

Although not required, a declaration of incontestability can be a valuable filing to include along with your required maintenance filings.  You are allowed to apply for incontestability via a declaration of incontestability after five years of continuous use in commerce.  Incontestibility will likely be granted if there is no legal proceeding involving the trademark and there had been no prior adverse legal decisions related to the mark. 

The value of registration and incontestibility.  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 incontestibility is granted, your trademark protection is further strengthened because the mark can no longer be challenged except along very narrow avenues.  Contesting your mark’s validity will be off limits except for one of the following nine defenses:

1. Fraudulent procurement—that you got your trademark through fraud.
2. Abandonment—that you abandoned your mark.
3. Use of the mark to misrepresent the source of the goods or services.
4. Non-trademark or fair use—that your mark has become generic.
5. 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).
6. 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.
7. Use of the mark to violate United States antitrust laws.
8. 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 ).
9. 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 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.  If your uncertain, you should check with your trademark lawyer or go to the USPTO’s “misleading notices” webpage.

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)