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.
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*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.