Using intellectual property trademarks is an important aspect of securing legal protection 🛡️ for your business or brand. Whether it’s a logo, symbol, or name, trademarking your intellectual property helps maintain brand loyalty and reputation.
However, filing your initial trademark application is NOT enough to keep your trademark alive forever. In fact, many people fail to recognize that require additional paperwork every few years!
Unfortunately, failing to stay on top of the United States Patent and Trademark Office’s (USPTO) maintenance requirements can result in a cancellation ❌ of your trademark.
Then, once your trademark is no longer protected with the USPTO, any other business in your geographical area – including one in the same industry! – is free to use your mark.
Therefore, this mistake could be extremely detrimental to your brand’s identity.
REQUIRED DOCUMENTS FOR TRADEMARK RETENTION
1. Mandatory: Section 8 Declaration of Use – After 5-6 Years
The USPTO requires owners to file maintenance documents between the fifth and sixth years 📅 following official registration.
More specifically, businesses must file a Declaration of Use and/or Excusable Nonuse under Section 8 of the Trademark Act (this form is colloquially known as Section 8).
The Section 8 document is a declaration that the trademark is in current use in commerce.
On the other hand, the owner may also utilize this form to declare that the trademark is not in use due to special circumstances. Examples of acceptable causes of nonuse include a trade embargo, the sale of the business, and catastrophes 💥 causing a disruption in manufacturing.
Along with the owner’s name and address as well as the registration number, Section 8 asks owners to provide the following information:
✔️ A statement asserting that the trademark is in current use in commerce
✔️ A list of the goods or services in connection with the trademark
✔️ One example of the trademark in use, such as a tag or label 🏷️ attached to a good or an advertisement for services (Source: USPTO)
However, if the trademark is not currently in use, the document must also identify the last date it was used, when use is expected to resume, the reason for nonuse, and the steps being taken to restart use.
2. Mandatory: Combined Section 8 Declaration of Use and 9 Application for Renewal – After 10 years
Next, the USPTO requires owners to file another maintenance document every ten years following registration. More specifically, owners must file a combined Section 8 and Section 9 document.
While Section 8 provides the same declarations as upon previous filing, Section 9 requests renewal of the trademark registration. However, filing the combined documents also comes with a mandatory filing fee of $425 💰.
3. Optional but Highly Recommended: Section 15 Declaration of Incontestability – After 5 Years
Failure to submit Sections 8 and 9 Declaration of Use and Application for Renewal will result in a cancellation of your trademark. On the other hand, submitting a Section 15 Declaration of Incontestability is optional but highly recommended.
More specifically, Section 15 declares continuous use of your trademark over five years, and in turn, requests incontestable rights ✅ to the mark.
In other words, after associating your mark with your business for five years, you can avoid trademark disputes by third parties.
In addition to a $200 💸 filing fee and the registration number, Section 15 also requires the following information:
✔️ A statement that the trademark has been in continuous use for five years after the date of registration
✔️ A statement that there has been no legal decision and are currently no pending lawsuits against your right to own and use the trademark (Source: USPTO)
When it comes time to file the required and optional maintenance documents to retain your ownership of your trademark, you may do so using the Trademark Electronic Application System (TEAS) 🖥️.
Due to the time-sensitive nature of these documents, it’s important to be aware of the date of registration of your trademark, and keep the deadlines in your calendar.
Ultimately, missing out on maintaining and renewing your intellectual property could be a huge loss to your business. Visit the USPTO website for more information, or work with a legal professional for further guidance.