There’s good news and bad news when it comes to maintaining your trademark registration. The good news is that your trademark registration will last forever if properly maintained. The bad news is that proper trademark maintenance is hard to keep track of and even harder to explain.
Essentially, you’ll need to periodically submit a few filings to the USPTO that shows that you are still using the trademark along with some fees (shocker). Seems simple, right? Well, it’s not.
Declaration of Use
Your first maintenance filing is due between the 5th and 6th years after your trademark registers. This is referred to as a “Declaration of Use and/or Excusable Nonuse under §8”. After that, you’ll need to file a Declaration of Use between the 9th and 10th year after registration and every ten years thereafter. If you don’t make this filing, you will lose your trademark.
Declaration of Incontestability
Between the 5th and 6th years, you should file what’s called a Declaration of Incontestability under §15, if you can. Incontestable trademarks cannot be attacked for descriptiveness, including surname or geographic descriptiveness. In order to show incontestability, you’ll need to declare continuous use of the trademark and state that the trademark has become generic or subject to a pending proceeding.
Application for Renewal
Between the 9th and 10th years, and every ten years thereafter, you’ll need to file and Application for Renewal under §9, which is exactly what it sounds like. This filing is required to keep your trademark.
What this all means
In most cases, you’ll need to file a Declaration of Use and Declaration of Incontestability between the 5th and 6th years after registration. Between the 9th and 10th year after registration and every tens years thereafter, you’ll need to file a Declaration of Use and Application for Renewal. The USPTO isn’t going to bend over backwards to make sure you don’t blow these deadlines (though there is a grace period), so you’ll need to keep a good calendar and make sure your contact info is current with the USPTO. Most of our services include docketing and reminders of these deadlines, so you don’t have to worry about remembering.
