How Do I Maintain My Trademark Registration?

Branding matters in the modern business world, making trademarks one of the most valuable forms of intellectual property. A trademark is a symbol, word, or phrase that serves as a source signifier. To protect your company’s service mark, you can register it with the United States Patent and Trademark Office (USPTO). 

Maintaining your trademark registration can become complicated and time-consuming. As with most legal matters, it is best to consult with an experienced trademark lawyer before beginning the process.

How Do I Initially Register a Trademark?

Trademark rights are not permanently guaranteed by the USPTO. You have to actively maintain your trademark rights. So, how do you do that?

The short answer is that you must use the trademark and file periodic Declarations of Use and renewals. “The main way that most trademark owners can lose a trademark would be to stop use of it,” says Miriam Trudell, an intellectual property attorney at Sheridan Ross in Denver, Colorado.

To register your trademark, you must go through an application process with the USPTO.

There are several steps to the federal trademark registration process:

1. Create a strong, distinctive trademark
2. Search for other trademarks to make sure the trademark you want isn’t already registered
3. Make an account on the USPTO website and complete the trademark application using USPTO’s Trademark Electronic Application System (TEAS)
4. Pay the application filing fees
5. Promptly answer inquiries from the trademark examiner regarding your trademark
6. Get your trademark published in the USPTO’s Official Gazette, allowing other potential trademark holders to file an opposition to your trademark within 30 days
7. Resolve any trademark disputes through the Trademark Trial and Appeal Board
8. Receive a certificate of registration

The Importance of Trademark Maintenance

Filing for a trademark is not a set-it-and-forget-it task. Once a business or individual has a registered trademark, maintenance is essential to ensure they keep their trademark protections. Failing to maintain trademark registration can result in cancellation. In addition, losing priority means someone could claim that priority, and the business would lose its right to use the mark.

The Declaration of Use (Section 8 Filing)

Under federal law, a trademark is only valid if it is being used. “[That] means, for a product, to use it on the product or product packaging,” Trudell explains, adding that the product must be shipped in commerce that Congress can regulate. “For a service, it means to continue to advertise and render the services.”

To register and maintain a trademark at the federal level, a business or organization must prove that its application satisfies the commercial use requirement.

As explained in the Trademark Manual of Examining Procedure (TMEP), an application for renewal must have a “bona fide” commercial purpose for its trademark.

Beyond demonstrating commercial use to obtain trademark registration in the first place, trademark holders must maintain that use. If commercial use lapses, trademark protection will eventually lapse as well.

The USPTO imposes an active obligation on trademark holders. Maintaining continued commercial use is not sufficient to maintain trademark protection—a business or organization must also file a trademark maintenance Declaration of Use and renewal documents.

The basic timeline for filing these maintenance documents is as follows:

1. The initial trademark Declaration of Use must be filed between the fifth and sixth year after the registration date.
2. After the initial Declaration of Use, subsequent Declarations of Use combined with a renewal application must be filed every 10 years after the registration date.
3. Both the six- and tenth-anniversary deadlines offer a six-month grace period, but filing within this period incurs an additional fee.

What Goes Into the Application?

“You have to review the products and services in the registration and confirm what is currently in use,” Trudell says.

The declaration of use or excusable nonuse must include certain key information about your registration and use of the trademark:

• Your trademark registration number
• The trademark owner’s information
• A statement claiming that you are using the trademark
• An explanation of the types of goods and services the trademark is being used for
• An example of how the trademark is used (called a trademark specimen)
• For nonuse, an explanation of why the trademark isn’t being used

For a product, the filing must include a declaration form and proof of use, such as a photo of the product showing the trademark on a label or box. Proof of use may also be shown by a screenshot of an online shopping cart page that displays the product image and trademark, and on which a customer can add the product to the cart.

For services, proof of use would include an advertisement. A brick-and-mortar store can submit a photo of the store itself as proof of use.

“But the trademark office has gotten quite strict in the last two years or so,” Trudell cautions. “If you have more than two or three products or services listed, the trademark office will want to see a picture of use of the trademark on every product listed, and for the services, every service listed.”

It is important to emphasize that trademark registrations are not automatically maintained by the federal agency. A company or organization must submit a valid Declaration of Use and a combined Declaration of Use/renewal filing that clearly demonstrates continued commercial use.

The Declaration of Incontestability (Section 15 Filing)

You can also file a declaration of incontestability with your sixth or tenth year filing. When a trademark becomes incontestable, third parties are barred from ever challenging your use of the trademark or the trademark’s validity. In other words, it further solidifies your rights to the trademark.

If you choose to submit a declaration of incontestability, there are a few requirements:

1. You can only file for incontestability at least five years after your initial trademark registration date
2. Your trademark must be listed on the U.S. Patent and Trademark Office’s Principal Register rather than the Supplemental Register

Only trademarks that are considered distinctive are listed on the Principal Register. To be distinctive, a trademark must either be fanciful, arbitrary, or suggestive. Trademarks that are simply descriptive or generic go on the Supplemental Register, and you won’t be eligible for declaring incontestability.

Your application for incontestability must include:

• Your registration number
• Your original filing date
• Payment of the filing fee
• A statement that the trademark has been in use for at least five years, and there is no adverse decision or pending legal action against your use of the trademark

Renewing Your Trademark Registration (Section 9 Filing)

In the fifth or sixth year, you submit a declaration of use or excusable nonuse. A declaration of use proves to the USPTO that you’re still using the trademark in commercial activity. Alternatively, excusable nonuse documentation shows that you have been unable to use the trademark in commerce due to reasons beyond your control, and your registration shouldn’t be canceled due to nonuse.

For example, many businesses during the COVID-19 pandemic were temporarily unable to maintain trademark use in commerce due to factors beyond their control. Nevertheless, they still needed their trademark registration for when regular commerce resumed.

Missing the trademark renewal deadlines will result in the cancellation or expiration of your trademark registration. However, the USPTO offers a six-month grace period for an additional fee if you miss the filing deadline.

“In the first 10 years from your original registration date, you have to renew the trademark registration twice — once in the fifth or sixth-year window, and then at the 10-year mark,” says Pheiffer. “After those first 10 years, you pay a small fee and give the USPTO proof that you’re still using the mark rather than just holding the mark hostage. As long as you do that every ten years, you can keep using that indefinitely.”

Critical Deadlines You Cannot Miss

It’s crucial to meet the deadlines outlined by the USPTO. Missing a deadline could result in the loss of trademark protection. A missed deadline results in automatic cancellation or expiration of the trademark registration. Holders also lose nationwide priority and protection.

• Section 8 Declaration of Use – due between years 5 and 6 after registration (15 U.S.C. §1058).
• Section 15 Declaration of Incontestability is optional and may be filed after five years of continuous use (USPTO).
• Section 9 Renewal – due every 10 years after registration (15 U.S.C. §1059).

There is a six-month grace period for Section 8 and Section 9 filings. However, additional fees apply for late filings.

Trademark holders should not depend on the USPTO to send deadline reminders. Instead, they should set their own calendar reminders. Businesses can hire an attorney to manage monitoring deadlines.

Monitoring Your Trademark for Infringement

The USPTO is only a registration database. It does not actively police the use of your mark. It is up to individual trademark owners to monitor the marketplace for infringement. Monitoring typically includes detecting unauthorized use in the commercial space. It can also involve monitoring new USPTO filings for trademark requests that are too similar to an already registered mark. It’s also helpful to monitor social media, domain registrations, and business listings.

It’s crucial to detect trademark infringement early. The sooner these issues are addressed, the better a business can prevent dilution, confusion, and the weakening of rights. Quicker action also supports enforcement actions, such as cease-and-desist letters. Failing to take action and enforce a trademark can result in diminished legal protection. The defense argues that if a business fails to protect its trademark, it cannot assert protection after the trademark has already been disseminated in the market.

If the trademark is used internationally, monitoring could be worldwide. The Madrid Protocol is an international treaty that enables trademark holders to protect their trademarks in more than 120 participating countries. Failing to protect the home country’s trademark status can prevent international protection.

Working with a Trademark Attorney

Trademark rights matter, and not every registration maintenance filing is as straightforward as it may seem. That’s where a lawyer can help. First, a lawyer will ensure that critical deadlines are met. “The mailing of reminders of deadlines is not perfect,” Trudell says. For the Declaration of Use and combined Declaration of Use/renewal deadlines, “[the trademark office] also only sends out a reminder a year before, which is the earliest it can be filed. And if you by mistake delete that email, then you won’t have another reminder.”

The forms are another area where lawyers can help. While some registrations are straightforward, others can be complex. Errors in the paperwork can lead to rejection, and if you don’t resolve the issue, the entire registration may be canceled.

Among other things, a trademark attorney will:

• Schedule and prepare all trademark Declaration of Use and combined Declaration of Use/renewal filings.
• Ensure that bona fide commercial use is maintained.
• Monitor any third-party filings that may impinge on your IP rights.

In some cases, businesses may be worried about other companies infringing on their trademark rights. To maintain your trademark and protect your interests, you must address infringement as soon as possible.

Hire an Attorney

It’s wise to get the help of a trademark attorney when registering your trademark, says Pheiffer. Trademark registration can be time-consuming and divert your focus from running your business. If you file on your own, there’s also the danger of making unnecessary mistakes that further delay the process.
If you have any specific questions or concerns about maintaining a trademark, a reputable trademark lawyer can help.