How Do I Maintain My Trademark Registration?

Trademarks are vital to establishing a business’s presence in a region or marketplace. There are significant benefits that come with being a registered trademark owner, including:

• Exclusive rights to use your trademark symbol, word, or phrase in commerce 
• Putting the general public on notice that the trademark belongs to you 
• The ability to sue others for trademark infringement  

But how long does a trademark registration last? In theory, you can use your trademark indefinitely, says Rory P. Pheiffer, an intellectual property lawyer at Barnes & Thornburg in Boston, Massachusetts. However, to maintain registration, you will have to go through trademark renewal every several years. 

There are two basic things you must do to keep your registered trademark: 

1. Periodically submit maintenance documents to the USPTO proving continuous use of your mark 
2. Actively use the trademark in the sale of goods and services 

Speak with an experienced trademark lawyer about your particular situation to protect your brand. 

How Do I Initially Register a Trademark?  

To register your trademark, you must go through a filing process with the United States Patent and Trademark Office (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

Learn more about the trademark registration process. 

How Often Do You Have To Renew Trademark Registration? 

“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.”

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

What Is the Process of Renewing a Trademark? 

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 their trademark in commerce due to factors outside their control. Nevertheless, they still needed their trademark registration for when regular commerce resumed. 

What You Must Include in the Declaration of Use or Excusable Nonuse

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 

Between the ninth and tenth year, you have to file another declaration of use or excusable nonuse plus an application for renewal. After this first 10-year mark, you only have to submit paperwork every ten years to maintain registration. 

Declaration of Incontestability

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 solidified 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 

Getting Legal Help from a Trademark Attorney 

It’s wise to get the help of a trademark attorney when registering your trademark, says Pheiffer. Trademark registration can become a time-consuming process that takes away from your focus on running your business. If you file on your own, there’s also the danger of making unnecessary mistakes that further delay the process.  

A trademark lawyer will be well-versed in the process, letting you focus on your business. Look for a trademark attorney in the Super Lawyers directory for legal help.