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We’ve previously discussed the trademark application process and how to select a good trademark name.
But after your trademark is registered by the US Trademark Office (USPTO), you will need to submit periodic maintenance filings to ensure it remains valid.
When is the Trademark filing due?
The first maintenance filing is due between the 5th and 6th year following the registration date of your trademark (6-year filing).
The trademark will then need to be renewed between the 9th and 10th year following registration, and every ten years thereafter. The process is similar to the 6-year filing, with the exception of a Section 9 renewal instead of a Section 15 declaration.
If you miss the 1-year term for these filings, there is an additional 6-month grace period to make the submission, though the USPTO filing fee will increase during this term.
What needs to be filed to renew your trademark?
The USPTO requires that you submit a declaration of use under Section 8, to show that your trademark is used to market the products included under your registration. This is the mandatory portion of the filing to keep your trademark alive and needs to be done for every class (category) of products listed under your registration which you wish to keep. Evidence of use can be active selling pages or photos of the product or packaging, depending on the type of trademark (Word or Design).
For the 6-year filing, it is recommended to also include the optional Declaration of Incontestability under Section 15 along with the Section 8 declaration. This can be done under one filing, as a Combined Declaration of Use and Incontestability Under Sections 8 and 15.
The benefit of including Section 15 is to protect your mark from third party attempts to cancel the registration. Following the filing and approval of a Section 15 declaration, the trademark becomes incontestable. Once a trademark is incontestable, certain aspects of the registration cannot be challenged by third parties (such as the trademark’s validity).
What happens if I let my trademark expire?
If you fail to make the submission in time your trademark registration will be cancelled. So, it is important to make sure these filings are handled in time!
To conclude, it is recommended to make note of the maintenance filing deadlines once your trademark is registered and to consult an attorney so that the filings are timely handled.
