How to Keep Your Trademark Registration Alive

May 26, 2015 — Leave a comment

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.

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