Archives For December 2015

If you’ve obtained a federal trademark registration with the United States Patent & Trademark Office (or USPTO for short) you may be wondering how long your registration lasts and how long you can protect your trademark.

Well, there is good news here. Unlike copyright law and patent law, which have time limits on protection (usually 75 years after the death of the creator for copyrights and 20 years for patents), trademark protection can extend indefinitely if you stay current on filings. That’s because you can protect your registration for so long as you are using the mark in commerce, provided it doesn’t become generic.

Assuming you are still using the mark in commerce, the key is to stay current on your filings. Here’s what you need to do.

5 years after registration

To keep your registration alive, make sure you file your Section 8 Declaration of Use between the 5th and 6th year after your registration. You’ll have to include a new specimen of use to prove to the USPTO that you are still using the mark in commerce.

You can file a Section 15 Declaration of Incontestability. This filing allows you to claim “Incontestability” status for your mark which gives you a legal presumption that your registration is valid (among other benefits). That can be really helpful if you find yourself in court as a plaintiff or a defendant.

Since these two filings occur at the same time, the USPTO has a combined Sections 8/15 form you can file to save time.

These are critical filings because, if you fail to make them, you can lose your mark. There are some grace periods in which you can file the documents after the deadline, but you really should strive to timely file the documents to avoid headaches.

10 years after registration

Five years later (10 years after the registration) you have to renew your registration. Specifically, you file this between the 9th and 10th years following the registration. Here you use a Section 9 renewal form. Also at this time, you must file another Section 8 Declaration of Use to prove that you are still using the mark in commerce.

Just like the filings above, the USPTO maintains a combined form, the Sections 8/9 form to help you save time.

And also like above, if you fail to timely file these forms, there is a grace period. But you are better off filing it all on time.

20+ years after registration

Ten years later (20 years after the registration) you have to repeat that last process. You file another Section 9 form and another Section 8 form, or just use the combined 8/9 form. You must do this every 10 years to maintain the trademark registration.

Need help with your USPTO filings?

Let us know because we can help!

Image: Adobe/raywoo
*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.


Last month we covered the Car-Freshener Corporation’s trademark infringement lawsuit against Exotica Fresheners Company.

Car-Freshener Corp claimed that Exotica designed their products to look like Car-Freshener’s products, that consumers would be confused and tricked into purchasing Exotica’s products rather than Car-Freshener’s products, and further, that because Exotica’s products were an inferior, additional damage to Car-Freshener was being caused.

This case came down to a debate over “Trade Dress” and ultimately the jury found in favor of the plaintiff, Car-Freshener.

“Trade Dress”

Trade dress, a subset of trademark law, contemplates the design of a product including its packaging. And much like other forms of trademarks, it can be protected under federal law. However, it must still serve as a source identifier. That is, it must allow the consuming public to see the trade dress (the packaging) and identify what company is producing and selling that good. Therefore, it must be either inherently distinctive or it must acquire secondary meaning (see this post for more).

One exception to protecting trade dress, however, is that you cannot protect functional aspects of packaging using trade dress. Functionality can only be protected under other forms of intellectual property, namely patent law.

The Arguments

While Car-Freshener Corp. made the arguments outlined above, the defendant, Exotica, claimed that its palm tree was sufficiently different from the pine tree used by Car-Freshener Corp. and that they used similar colors for the same scents because they were the industry standard. Exotica also claimed that they have used yellow packaging off and on for years without complaint from Car-Freshener Corp. In the end, Exotica claimed that it was just a coincidence that the products looked similar.

The Jury Verdict

The jury, weighing whether Exotica’s products were so similar to Car-Freshener Corp’s as to cause consumer confusion, found in favor of the plaintiff, Car-Freshener Corp. They also awarded over $50,000 in damages to Car-Freshener Corp.

This is not overly surprising given the numerous similarities between the two products. They were both trees of about the same size. They used similar colors for the different fragrancies. And they were sold in clear packaging with a yellow cardboard top containing red and green elements.

What’s Next

Unless they appeal, Exotica will be required to change their packaging to avoid future infringement. Of course, you likely won’t see much of a change on your local store shelf because Exotica is actually a fairly small company. In fact, while Car-Freshener’s sales exceed $100 Million per year, Exotica’s sales are only about $100,000 per year.

Of course, that doesn’t mean Exotica wasn’t worth suing. To the contrary, Car-Freshener can use this case to protect their brand and also to scare off other infringers and would-be infringers.

Questions about your trademark rights?

If you want to protect your trademark, contact us! We help startups and small business file trademark applications with the USPTO all the time.

Image: Court Case
*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.