Trademark Maintenance: How to Maintain a Trademark in US?
Trademark Maintenance: How to Maintain a Trademark in US?
After the trademark registration with the USPTO (United States Patent and Trademark Office), you must maintain it to avoid cancellation. First, you must continue using the registered trademark in commerce. In addition, you have to file certain documents at designated intervals as proof of the continued usage of a trademark. If you don’t file the specified documents before the deadline, your trademark will be cancelled, expired, or invalidated. This article provides detailed information on how to maintain a trademark in US.
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Get Started Now!What is Trademark Maintenance in US?
Trademark maintenance in the US refers to the ongoing actions you take to keep your federally registered trademark active and legally enforceable. It’s not a one-time process; it involves continued use of your trademark in commerce and filing specific documents with the USPTO. This demonstrates to the USPTO that your trademark remains relevant and distinctive in the marketplace. By correctly maintaining your trademark, you safeguard your brand’s legal protection, prevent cancellation, and ensure its continued strength among consumers.
Why is Trademark Maintenance Important in US?
Trademark maintenance in the US is crucial for several reasons:
- Preserves Legal Protection: A maintained trademark registration strengthens your legal position in infringement cases. It allows you to take legal action against unauthorized trademark use, potentially recovering damages and preventing brand dilution.
- Prevents Cancellation: Failure to maintain your trademark can lead to cancellation by the USPTO. This means you lose the nationwide legal protection associated with federal registration and would need to re-register the mark.
- Maintains Brand Strength: Consistent and proper use of your trademark ensures it remains distinctive and recognizable to consumers. Trademark maintenance helps you control how your brand is presented and prevents genericization, where a trademark becomes synonymous with the product itself.
How to Maintain Your Trademark in US?
Following are the ways to keep your trademark alive in US.
Continued Use of Trademark
The first requirement to maintain a trademark is continually using it in commerce. It must consistently appear in association with its registered goods or services during everyday business transactions. To signal your trademark’s registration status, use the ® symbol alongside the mark. However, you risk losing federal protections if you stop using a registered trademark. A registered trademark is considered abandoned after three consecutive years of non-use with no intent to resume, potentially leading to cancellation by the USPTO.
Filing Maintenance Documents at Regular Intervals
You must submit several maintenance documents to the USPTO to keep your US trademark registration active. This will ensure your continued use of a registered trademark in the US. Here are the documents related to trademark maintenance:
- Declaration of use and/or excusable nonuse under Section 8: It is a signed statement made by the owner affirming the trademark is in use or non-use. You must file this document between the 5th and 6th years after the registration date.
- Declaration of use and/or excusable nonuse and renewal application under Sections 8 & 9: It is a combined filing of the declaration of use and/or excusable use and application for renewal under sections 8 and 9. A Section 9 renewal application is a written request to keep your registration active. You must file the first combined form between the 9th and 10th years after the registration date. After that, it needs to be filed at the ten-year term.
- Declaration of Incontestability under Section 15: The Section 15 declaration of incontestability is filed when the trademark owner intends to claim incontestable rights to their marks. If your mark qualified for incontestable rights between the fifth and sixth years after the registration, you can file it with Section 8 filing requriements.
- Declaration of use and/or excusable nonuse under Section 71: This is a signed statement by the owner extending the protection of the mark registered under the Madrid Protocol. It states whether the mark is in use or not. It has a separate timeline for filing after the U.S registration date.
- Section 7 Amendment or Correction of Registration: This form allows you to update your registration information, such as deleting goods or services you no longer use with the trademark.
Note: USTPO gives a grace period for up to six months after the filing due date of Section 8 declarations, Section 71 declarations, and Section 8 and 9 combined filings. The additional fee is applicable when filing during the grace period.
Also read: Trademark Search in US
Common Mistakes to avoid while submitting documents
Errors in your maintenance filings can lead to delays or even cancellation of your registration. Here are some common mistakes when it comes to post-registration filings:
- Incorrect Ownership Information: Ensure the ownership details in your filing match the USPTO’s records. If there have been changes, address them through the appropriate USPTO channels before filing.
- Including Unused Goods or Services: Don’t file for goods or services with which your trademark is no longer used. You can delete them from your registration during maintenance filings.
- Improper Specimens: The submitted specimens should demonstrate your trademark’s use in commerce with the identified goods or services. Refer to the USPTO’s guidelines for acceptable specimens.
What happens after the Post-registration filings?
Once you submit your trademark maintenance documents, the USPTO will review them. The possible outcomes include:
- Notice of Acceptance: After the acceptance of the filings, you’ll receive a notice confirming your registration’s continued status or renewal (if applicable) .
- Updated Registration Certificate: For approved Section 7 amendment requests, you’ll receive an updated certificate reflecting the changes.
- Office Action: If your filings contain errors or require clarification, the USPTO will issue an office action outlining the issues and requesting a response. Failing to respond using Post- registration response to office action form can result in the cancellation of your registration.
Conclusion
In conclusion, maintaining a US trademark registration is essential to safeguard your brand’s legal protections and prevent cancellation. It involves continued use of your trademark and filing specific documents with the USPTO at designated intervals. By following these steps and avoiding common filing mistakes, you ensure your trademark remains active and enforceable, strengthening your brand in the marketplace.
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