The short answer to this question should be, forever. However, there are various steps one must take (such as meeting renewal deadlines and using the subject mark in commerce) to maintain trademark registration. This blog will look to educate our readers on post-registration obligations and the ongoing filing requirements that are necessary to maintain a mark in good standing.
What are the key factors involved in keeping a trademark registration alive?
Trademark Registration Renewals
Great news, your mark has been registered with the United States Patent and Trademark Office (“USPTO”). Now what must be done? To maintain trademark registration, trademark owners must file Section 8 Declaration of Use and/or Excusable Nonuse paperwork between the fifth and sixth years after the date of registration. Another Section 8 Declaration of Use and/or Excusable Nonuse must be filed between the ninth and tenth years after registration, along with a Section 9 Application for Renewal. After the first nine (9) to ten (10) years after renewal, both a Declaration of Use and/or Excusable Nonuse and an Application for Renewal must be filed every ten (10) years.
If, after five (5) years of continuous use in commerce, the registered mark meets certain legal requirements, the owner may file an optional Section 15 Declaration of Incontestability. Please note that “incontestable” is a bit misleading because the mark may still be contested, but it makes it harder for any would-be challenger to prevail in a dispute over mark ownership. When filing a Declaration of Incontestability, the owner must make affirmatively represent that: (1) the trademark has been in continuous use in commerce for a period of at least five (5) years; (2) there has been no final legal decision adverse to the owner’s claims of mark ownership; and (3) there are no pending legal proceedings concerning the subject mark.
Use in Commerce
As part of each trademark registration renewal filing, the mark owner must provide examples of the mark being used in commerce by submitting valid specimens of use. The Trademark Manual of Examining Procedure (“TMEP”) defines “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in the mark.” Valid specimens showing use in commerce may include websites, commercial packaging, and/or labels. If, for reasons beyond the owner’s control, the mark is not being used in commerce, the owner may file a Declaration of Excusable Nonuse, stating when she/he/it expects to resume use of the applicable trademark. The USPTO will evaluate this declaration and make a determination as to whether the trademark registration should remain active or be cancelled.
A trademark will be considered abandoned when “use has been discontinued with intent not to resume such use.” Failing to use a registered mark for a period of three (3) consecutive years is prima facie evidence that the mark has been abandoned. The key term in this definition is intent. This means that if it is the trademark owner’s intent to resume use of the mark, it becomes more difficult to contest continued registration on the basis of abandonment.
The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the legal advice of an experienced attorney.