Don’t Let Your Trademark Lapse!

After all your hard work getting your trademark listed on the USPTO’s Principal Register, you have several years before you must submit more paperwork to the federal agency. Essentially, the USPTO wants proof that you continuously use your trademark in commerce after it’s registered. We’ll go over some important timelines and other information in this blog so your trademark isn’t at risk of cancellation. 

Declaration of Use (5-6 Years After Registration)

The USPTO is a little more involved the first few years after you register your trademark. Instead of the 9/10-year mark that mandates a trademark renewal, you have to precede that timeline by a few years when your trademark is new. The declaration of use involves a legally binding statement that lists items you are currently selling under your trademark in the U.S. Additionally, the Declaration of Continued Use must include an acceptable trademark specimen and associated fees. 

It is crucial that you submit the Declaration of Continued Use no later than six years after the date of initial registration. We recommend that you submit this declaration as soon as you are able, which can be as soon as five years after the initial registration date. 

Renewal (9-10 Years After Registration)

Just a few short years after you submit your Declaration of Use, you have to submit the full trademark renewal. You must submit your first full renewal no later than 10 years after your trademark’s initial registration date. You will have to submit the same materials as before (the Declaration of Continued Use). Again, we recommend that you renew soon after you become eligible (nine years after the initial registration date). 

Once you’ve completed your first full renewal, subsequent renewals are due within 10 years after the previous one. Trademark renewals are often referred to as Section 8-9 filings, as the first Declaration of Continued Use submission is covered under Section 8 of the Lanham Act and each subsequent renewal falls under Section 9 of the same law. 

Section 15 Declaration of Incontestability

Apart from the required filings, we encourage trademark owners to take advantage of the opportunity to file a Section 15 Declaration of Incontestability. This will be filed concurrently with the first Declaration of Continued Use (Section 8 filing). 

What’s the benefit of a Section 15 filing? Essentially, you will make it virtually impossible for your trademark to get canceled. Again, it is not required; in many cases, though, it’s well worth it in exchange for expanded rights for your trademark. Having this incontestability status is important if your trademark even becomes subject to legal action; if, say, your trademark is sued for infringement, there is a rebuttable presumption that your mark is valid. 

Conclusion

At the bare minimum, our firm would be glad to help you make sure you are on top of your trademark renewals and other required filings. That’s not all we can do for you, though. We can explain the benefit of a Section 15 filing and work meticulously and effectively so your intellectual property receives the strongest protections possible. Your first step is scheduling a 15-minute phone call with us, which you can do so here. Our goal is helping you grow your company’s profits—with confidence!

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Hayoon Kane Law Firm

I am committed to helping business owners such as yourself understand the intricacies of the law, so you can concentrate on growing your company.

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