Archives For May 2015

When you search the USPTO database for trademarks you will find a lot of marks classified as “DEAD.” This usually means one of two things: First, the mark was denied registration and the applicant either failed to appeal the denial or they did not win their appeal; or second, that the mark was canceled for failing to file proper maintenance documents with the USPTO.

If you have a trademark registration, don’t let that happen to you! Make sure you file the below forms to keep your registration “ALIVE.”

Section 8 Declaration of Use

The first filing you should make after receiving a registration is a Section 8 Declaration of Use. You must file this between the 5th and 6th year after the registration date.

The purpose of this filing is to show the USPTO that you are still using the mark in commerce. For that reason, you will be required to file specimens of your use (much like when you filed the original application).

If you fail to timely file this declaration, there are grace periods before your mark is cancelled, but you don’t want to wait too long, so file as soon as you can!

Section 15 Declaration of Incontestability

Assuming your mark has been in use for 5 continuous years and is on the Principal Register, you can file a Section 15 Declaration of Incontestability to claim “Incontestability Status.” This creates a legal presumption that your registration is valid and provides for many other benefits to mark owners.

Often this is filed along with the Section 8 filing above. In fact the USPTO maintains a combined 8/15 form that you can use to save time and paperwork.

Section 9 Renewal

Lastly, between the 9th and 10th year after you receive a registration you must renew your registration. Then, it must be renewed every ten years thereafter. At the same time, you must file another Section 8 Declaration of Use showing actual use of the mark in commerce.

Again here, the USPTO maintains a combined 8/9 form to save you time and paperwork. And like above, there are grace periods if you fail to file, but you really should just file on time to save money and headaches.

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Image: Thinkstock/simo988
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

We talk a lot on this blog about U.S. trademark protection and the United States Patent & Trademark Office. But have you ever wondered about how you can protect your trademark abroad? It’s possible, and important too. In this post we will introduce you to the World Intellectual Property Organization (WIPO) and the Madrid System.


WIPO is a self-funded agency of the United Nations. It’s objective is to provide global intellectual property services plus assistance with international IP policy discussions and cooperation among member states.

The organization was founded in 1967, currently has 188 member states, and is headquartered in Geneva, Switzerland. You can see all the member states here (most developed countries including the U.S. are members).

WIPO also provides an academy use to teach (in person and through distance learning courses) relevant information about international protection of intellectual property. You can learn more about the WIPO Academy here.

The Madrid System

Obtaining a trademark registration in America can be hard, time consuming, and expensive. Imagine if you had to repeat that process in nations all over the world. It’d be overly burdensome.

Enter the Madrid System.

Named after Madrid, Spain, where diplomatic conferences were held and a treaty ultimately signed, the Madrid System is a process for obtaining international trademark registrations. Applicants file one application, in one language, and pay just one set of fees to protect their trademarks in up to 95 countries (not all WIPO member states are parties to the Madrid System).

WIPO promotes three benefits of using the Madrid System.

First, convenience. The system makes it easier to protect your trademark around the world because there is just one central filing location. Further, you can maintain your protection and make changes using that one central location.

Second, lower costs. Rather than paying attorneys in multiple countries to draft trademark applications in different languages and with different rules and procedures, you just pay one fee to WIPO (which changes based on the countries in which you want protection) and file one application.

And third, broad geographic coverage. There are 95 countries to the Madrid Protocol, and your protection may extend up to 111 total countries. WIPO reports that such members represent up to 80% of world trade.


The Madrid System is divided into three phases.

First, you must obtain a registration in your home country (for Americans, this means the USPTO). You then submit your WIPO/International application through that same office. Second, WIPO will conduct a formal examination of your international application. Once approved, your trademark will be recorded in the International Register and published in the WIPO Gazette of International Marks and sent to those countries which you selected in your application. And lastly, each of those countries will examine your application to approve or deny your protection in their country.

From start to finish the process can easily take more than a year, but your international registration will last for 10 years. You can then renew your registration for ten year renewal periods.

Should You Seek International Protection?

Protecting your mark in the U.S. is really important. Protecting your mark on the international level is also important, but if you don’t ever plan to expand, then it may not be a good use of your resources. It really just depends on your unique situation.

For that reason, we think it is always a good idea to talk with a trademark lawyer about your plans. Along those lines, we’d be happy to help. Please contact us if you have any questions.

Image: WIPO
*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.