How Do I Maintain My Trademark Registration?
Understanding the requirements for trademark maintenance
on November 14, 2022
If you are a small business owner or entrepreneur, trademarks are a vital part of establishing your business’s presence in a region or marketplace.
There are significant benefits that come with being a registered trademark owner. Trademark rights include:
- The exclusive right 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 Boston intellectual property lawyer Rory P. Pheiffer. However, to maintain registration, you will have to go through trademark renewal every several years.
This article will cover the basic steps of registering a trademark and what is required to maintain registration. Once you have a basic overview, consider speaking with an experienced trademark lawyer about your particular situation to ensure your brand is protected.
How Do I Register My 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:
- Create a strong, distinctive trademark
- Search for other trademarks to make sure the trademark you want isn’t already registered
- Make an account on the USPTO website and complete the trademark application using USPTO’s Trademark Electronic Application System (TEAS)
- Pay the application filing fees
- Promptly answer inquiries from the trademark examiner regarding your trademark
- If the examiner doesn’t find problems with your application, the trademark will be published in the USPTO’s Official Gazette, allowing other potential trademark holders to file an opposition to your trademark within 30 days
- If there is a dispute, go through the resolution process with the Trademark Trial and Appeal Board.
- If issues either don’t arise or are resolved, you will receive a certificate of registration
Read this article for more details about the trademark registration process.
How Often Do You Have to Renew Trademark Registration?
“In the first ten years [from your original registration date], you actually have to renew the trademark registration twice,” says Pheiffer.
“You have to do it once in the fifth or sixth-year window, and then at the 10-year mark.”
After the first ten years, “you pay a small fee and file proof that you’re still using the mark in order to maintain those rights. But as long as you do that every ten years, you can keep using that indefinitely,” he says.
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 (currently between $100 and $200, depending on the renewal type).
What is the Process of Renewing a Trademark?
“Technically, you can keep the trademark forever,” says Pheiffer. “Every ten years you have to file for a renewal that tells the trademark office you’re still using the mark and gives proof you’re still using the mark rather than just holding the mark hostage.”
To keep your registered trademark, there are two basic things you must do:
- Actively use the trademark in the sale of goods and services
- Periodically submit maintenance documents to the USPTO proving continuous use of your mark
In the fifth or sixth year, you submit what’s called 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 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.
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 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 are required to file another declaration of use or excusable nonuse plus an application for renewal.
Once this 10-year mark is passed, you only have to submit paperwork every ten years to maintain registration.
It’s important to note that you can also file a declaration of incontestability with your sixth or tenth year filing.
When a trademark becomes incontestable, all 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.
First, you can only file for incontestability at least five years after your initial trademark registration date.
Second, your trademark must be listed on the U.S. Patent and Trademark Office’s Principal Register rather than the Supplemental Register.
What does this mean?
Practically, only trademarks that are considered distinctive are on the Principal Register.
To be distinctive, a trademark must either be fanciful, arbitrary, or suggestive. If the trademark is simply descriptive or generic, it will be listed on the Supplemental Register, and you won’t be eligible for declaring incontestability.
Read more about distinctiveness and what makes a strong trademark here.
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
Questions for 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 and make sure the process is done correctly the first time, allowing you to focus on your business.
Most trademark lawyers provide free consultations. So, it won’t cost you to meet with a lawyer, get legal advice, and discuss your trademark options.
To get the most out of a consultation, ask informed questions such as:
- What are your attorney’s fees and billing options?
- What are the benefits of registering my trademark?
- How much does it cost to register a trademark?
- How long until my trademark is officially registered?
- How do I make a strong trademark?
- What are the steps to renewing my trademark registration?
Once you have met with a lawyer and gotten your questions answered, you can begin an attorney-client relationship.
Look for a trademark attorney in the Super Lawyers directory for legal help.