®: What comes next? – Maintaining your Trademark

After what came sometimes be a years-long process, you’ve finally received your registration certificate. Congratulations! Now what do you do?

First of all, use that ®.  Once a trademark is registered, the owner will want to put the world on notice that their mark is in use and it is registered with the United States Patent and Trademark Office. This saves the owner the extra step of having to notify an infringing party that the mark is protected and that they do not have permission to use it. The ® put the public on notice as the USPTO will not enforce the rights associated with your mark against a potential infringer.  If an owner believes their mark is being used unlawfully, they should contact a Trademark Attorney to go over the best options to resolve the matter quickly and cost-effectively.

A Trademark registration has the potential to last indefinitely, as long as the required filings and fees are timely submitted and continued use is shown.

The first time a filing is required is between years five and six after the date of registration. This type of filing is called a declaration of use under Section 8 of the Trademark Act. A sample showing use of the mark is required with this filing, not unlike the specimen required during the six-month acceptance period prior to registration. At this time, an owner can also file a declaration of incontestability under section 15 of the Trademark Act, as long as they meet the minimum requirements. This status, if acknowledged by the Trademark Office, makes it harder for challengers to contest the validity of the mark later on, as it conveys a presumption that the mark is entitled to a presumption of validity.

The next required filings happen between years nine and ten. An owner is required to file another declaration of use, along with a specimen showing use, under section 8 of the trademark act. The owner is also required to file a renewal application under section 9 of the Trademark Act. The USPTO has made this type of filing easier by combining them into one easy form. Once this filing is complete, maintenance is only required every ten years.

If during either of these filing periods, years five to six or nine to ten, the Owner needs additional time, there is a six month grace period for each. However, like most grace periods or extensions with the USPTO, you will be required to pay for the extra time.  The easiest way to remember to keep up with these deadlines is to set reminders now unless you work with a Trademark Attorney who would docket and alert you of the upcoming renewal periods.

In summary, as long as you are using the mark in commerce and submitting the necessary renewal documents and fees, maintaining registration of a mark is a fairly straightforward process.