After you successfully register your Federal Trademark, you can’t just sit back and do nothing to keep that registration. You must take affirmative actions to maintain that registration and insure it does not get cancelled.
In this post we will share details about the trademark renewal process and how to renew your trademark registration so that you don’t lose that valuable investment in your intellectual property. The registration of a trademark gives your business the exclusive right to use that trademark in commerce.
Simply put, you must continue to use your trademark in commerce in addition to filing maintenance documents by certain deadlines with the USPTO to prove that you are continuing to use the mark in commerce.
Failure to file these documents and pay the associated renewal fee, or failure to continue to use your mark in commerce will subject your mark to cancellation or expiration.
To Maintain Your Registration, You Must Continue Use of Your Trademark in Commerce
One of the basic rules of trademark law is that you must “use it or lose it”. In other words, the rights and protections that come with a registered trademark are only available if you are using your trademark in commerce.
This is reason that you must file a “specimen” showing proof that you are using your trademark in commerce before it may proceed to registration, and why you must file renewal paperwork to maintain your registration.
If you are not using the trademark in commerce, then you are not entitled to the legal protections and benefits that come with it.
Overview of the Renewal Process
After you trademark is first registered, you will receive a notice about a year before your first maintenance documents must be filed. The Trademark Office wants to make sure you have plenty of notice that you must file this documentation.
Each maintenance document you file requires a signed declaration which states that you are continuing to use your trademark with the goods and services you described in your initial registration. You must also submit a specimen for each class of goods and services that you are selling under.
After you submit your renewal documents, they will be reviewed by the USPTO. In some cases, a registration can get audited – which is happening more and more frequently right now since the USPTO launched a Post Registration Audit Program in 2017.
If you have a registration with one class that contains 4 or more good or services or 2 classes with two or more goods and services in each class, then you are subject to be randomly selected for the audit program.
What happens if your registration gets audited?
You will need to provide more proof of use. Basically, you will have to provide evidence that you are using your trademark in commerce for each and every good or service that you listed in your registration. Those goods or services where you can’t prove use will be deleted from your registration and you will have to pay a fee for each class that contains deletions.
Be Proactive in Deleting Goods or Services that You No Longer Use
A smart practice to keep your trademark compliant and up to date is to delete goods or services from your application if you are no longer using the trade mark registration with those goods or services. You can do this by filing a Section 7 request to delete goods or services from your registration. There is no fee associated with this filing. This can be done between maintenance filings.
Similarly, it is a smart idea to review your trademark use before you file your maintenance documents and identify any goods or services that you are no longer using your trademark in connection with. You can then delete these good or services from your registration when you file your declaration. No fee is associated with this filing.
Exceptions for Non-Use are Rare
There are some very limited situations where you can request an exception from the requirement that you use your trademark. This can occur when you have stopped using your trademark as a result of special circumstances beyond your control – but you do not indent to abandon the trademark. One such exception arose at the height of the COVID-19 pandemic.
Fees and the Consequences of Non-Payment
If you submit a required maintenance document but then delete goods or services from your registration before the maintenance document is accepted by the USPTO, then you will be required to pay an additional fee for each class that contained a deletion. If you fail to pay this fee when due, then the USPTO will send you an office action. Failure to respond to the office action will result in cancellation of your entire registration.
Why are these fees charged?
The USPTO wants to be notified of updates or changes to your trademark use. This is because the “trademark register”, which is the official record of all federally registered trademarks, is only as good as the information contained in it. Not only that, but the public relies on the information contained in this database as notice of what trademarks are taken and to make informed business decisions about its own intellectual property. Outdated or incorrect information diminishes the utility of this database.
What are the Deadlines for Filing Renewal Documents?
Below are the requirements and deadlines to maintain your Federal Trademark registration. Make sure to calendar your renewal deadline so as not to miss it. There are a separate set of deadlines if you registered your trademark under the Madrid Protocol (i.e. foreign or international trademark registration) which are not covered in this post.
- You must file a Section 8 Declaration of Use and/or Excusable Nonuse between the 5th and 6th anniversaries of your registration date. (Note that the date of registration is used to calculate the renewal deadlines).
- Between the 9th and tenth year of your registration (otherwise known as the renewal period) , you must file a Declaration of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9
- Every 10th year thereafter, between the 19th and 20th anniversaries, 29th and 30th, etc. you must file a subsequent Declaration of Use and/or Excusable Nonuse and and Application for Renewal under sections 8 and 9.
Although the USPTO sends courtesy reminders of these deadlines to your email address on record, you are still responsible for filing these documents (even if you don’t receive the notice).
Some Helpful Tips for Filing your Maintenance Documents
Here are a few helpful tips and guidelines to make sure you don’t have any issues filing the correct documents in a timely fashion.
- If your due date falls on a weekend or federal holiday, then it is timely filed if received on the following business day.
- We recommend that you submit your required maintenance filing well in advance of your deadline. This will allow you to resolve any correctable errors if your filing is rejected and thus avoid any additional fees that might otherwise be due.
- There is a 6-month grace period but it will cost you. If you forget to file your renewal documents on time, don’t fret. There is a six-month grace period after your normal deadline. However, there is an additional late fee due if you file during this timeframe. But if you don’t file by the end of the grace period, your registration will be cancelled.
Other Optional Filings for Your Trademark Renewal
There are several other optional filings that you may want to strongly consider when you are preparing your renewal documents.
Section 15 Declaration of Incontestability
If your trademark is registered on the Principal register, has been in use for 5 continuous years in commerce, and there have been no legal decisions adverse to the trademark holder’s claim of ownership or rights to register the mark, then you may file a combined Section 15 Statement of Incontestable Rights with your Section 8 declaration.
Filing this document essentially makes the registration incontestable, thus making it that much more difficult for other parties to challenge or attempt to cancel your trademark.
A Section 15 declaration is only filed once and is frequently paired with the Section 8 filing.
Section 7 Amendment or Correction of Registration
As mentioned before, you are legally required to keep your registration up to date. If you stop using your mark in connection with certain goods or services that were originally listed on your registration, then you must file a Section 7 Amendment. This filing is required even if you don’t have a maintenance or renewal document due.
We recommend that you review your registered trademarks regularly and systematically so as to make sure you file appropriate amendments or corrections when necessarily. Similarly, if you need to change your registration to add additional goods or services, then it will be necessary to file a new trademark application. (Remember, you can always refine your description and delete goods or services, but you cannot add additional goods or services without filing a new trademark application). The reason for this is so that United States Patent and Trademark Office can determine if there are any similar trademarks that are selling the goods or services you intend to add to your registration. There is a registration fee when you file a new trademark application.
Common Mistakes People Make When Renewing Their Trademark Registrations
It is important that you always make sure that the information in your filings is up to date and accurate. Here are some common problem areas.
Wrong Trademark Owner
This seems simple enough, but it is a common mistake. You must make sure that the ownership information in your maintenance filing matches the ownership on your registration. If it doesn’t, your filing will get rejected.
Before you file you maintenance document, make sure the ownership information contained in your registration is up to date. If you sold your business, changed the business name, filed an LLC (or moved your LLC to a new state), then you may need to update your registration.
To do this, you will need to file an assignment or “change of name” document via the USPTO Assignment Recordation System or provide evidence of the change with your maintenance filing.
Goods and Services are not updated
This has already been addressed several times in this post, but it is vitally important that you delete goods or services that you are not selling with your trademark from your trademark registration. You can do this when you file your renewal documents or prior to submitting Section 8 Declaration.
One of the most common problems with trademark applications is that the specimen is not in the proper form. If the specimen does not show proper use in commerce of your trademark, then your Section 8 filing may get rejected and your registration cancelled.
What Happens After You File Your Renewal Documents?
Keep in mind that the USPTO is slow. Nothing is immediate. Approximately 1-2 months after you file your maintenance documents, your filing will get reviewed by an examining attorney and issue one of several documents:
- A Notice of Acceptance, Notice of Renewal or Notice of Acknowledgement. This is great news – it means your Section 8 declaration has been accepted.
- If you filed a Section 7 request to amend or correct your registration, and it is accepted, then you will receive an updated registration certificate that reflects the changes to your registration.
- An Office Action. If there is something wrong with your filing, then you will be notified via an Office Action. This filing will state explicitly the reasons for the refusal, and what you must do to respond. You may also receive an office action if your filing was accepted, but your registration was chosen for an audit. If you fail to respond to the office action by the deadline stated, then your registration will either be cancelled or expire.
We always recommend that you check the Trademark database about 3-5 business days after you file your document to make sure it is properly updated in your registration. You can use the Trademark Status and Document Retrieval system (TSDR) to review any documents filed in any registration.
Beware of Misleading Notices
It is unfortunate, but there are a number of private companies that have a practice of sending out unsolicited mailings around the same time that your renewal documents are due. They do a really great job of making it look like they are sending information directly from a government source. If you aren’t sure whether the information you received is legitimate, feel free to reach out to us at 919-460-5422 and we will be more than happy to help you out.
Here is a list of all of the Trademark Maintenance Forms.
Not Legal Advice
The hiring of a trademark lawyer is an important decision that should not be based solely upon advertisements. Before you decide, ask us to send you free written information about our qualifications and experience.
This post does not constitute legal advice. It is for informational purposes only. If you are wondering whether you should form an LLC or apply for a Federal Trademark, feel free to contact trademark attorney immediately.
If you are interested in registering your trademarks, click here to learn more about how Hawthorn Law can help you.