Trademarks: If You Don’t Use Them, You’ll Lose Them
Registering trademarks for your name or logo is a great step to establishing your brand with consumers and investors. However, registration is just the first step; there are many more that you must take to maintain your trademarks. Trademarks do not expire after a set term like patents and copyrights, but their protection does depend on your continued use. You must file proof of your continued use every so often with the United States Patent & Trademark Office (“USPTO”). This article summarizes the post-registration deadlines and filing requirements to maintain your trademarks.
Note: The USPTO will not remind you of deadlines outlined in this article. As the trademark owner, it is up to you to record these dates and timely file the appropriate paperwork and pay the corresponding fees. Also, beware of third-party solicitations that look like official USPTO correspondence. They’re often foreign entities and comprised of non-attorneys, and they’ll offer to file your maintenance paperwork for a grossly marked up fee. Now, onto the filings…
Declaration of Use or Excusable Nonuse
When? Between years 5 and 6 after registration.
Where? Online with the USPTO “TEAS” or paper submission.
How much? $125 with TEAS or $225 via paper, per class of goods or services.
The first maintenance filing comes 5 years after your trademark’s registration date. The Declaration of Use is your attestation that you’re still using the trademark in connection with certain goods or services. Your Declaration must also include an example of how you’re using the trademark, called a specimen. It’s the most common filing at this stage in the maintenance of your trademark.
Alternatively, if you weren’t always using your trademark but want to maintain your registration, you can file an Excusable Nonuse. The Excusable Nonuse must include the date when you stopped using your trademark and the details around why you stopped using it. You must also include the specific steps you’re taking to resume use of your trademark.
The Declaration of Use or Excusable Nonuse can be filed online with the USPTO with a filing fee of $125 or submitted via paper application with an increased fee of $225, per class of goods or services. You must file these forms between years 5 and 6 from the date of your trademark registration, but you can extend the deadline for an additional 6 months with an added $100 fee.
Declaration of Use/Excusable Nonuse plus Application for Renewal
When? Between years 9 and 10 after registration, and every 9th and 10th year period thereafter.
Where? Online with the USPTO “TEAS” or paper submission.
How much? $425 with TEAS or $725 via paper, per class of goods or services
The second maintenance filing comes 9 years after your trademark’s registration, and must be filed between every 9th and 10th year period after that. This filing includes another Declaration of Use or Excusable Nonuse combined with an Application for Renewal. This combined filing can be submitted online with the USPTO with a filing fee of $425 or via paper application with an increased fee of $725, per class of goods or services. You can extend the filing deadline for an additional 6 months with an added $200 fee.
Conditional filings: Declaration of Incontestability, Amendment, Assignment
The following filings depend on certain conditions rather than deadlines. A Declaration of Incontestability is optional but provides you additional protection at a relatively cheap cost. The Declaration is your statement that you have been using the trademark continuously for 5 years without any adverse legal decision or pending proceeding involving the trademark. Once filed, the Declaration shields the owner from certain attacks to the validity of the trademark. It can be filed online with the USPTO with a filing fee of $200 per class of goods or services, and can be combined with a Declaration of Use.
If you find that your trademark registration certificate contains errors, you can file an Amendment but only under limited circumstances. For instance, you can remove or add an article in a word mark but an amendment cannot materially alter the mark itself. You can also file an amendment to correct the owner’s name, such as updating it to the proper legal entity after originally listing your business’ trade name. You can file an Amendment online with the USPTO with a filing fee of $100.
Finally, if you sell or give your trademark to another owner, you should file an Assignment. The Assignment includes the basic information for the new owner, but also requires you to file a copy of the document actually assigning the trademark rights. The assigning document should include references to the registration numbers and the effective date of the assignment, and be signed by both parties. You can file an Assignment online with the USPTO with a filing fee of $40.
Don’t let your brand suffer because you failed to properly maintain your trademark registrations. Record the USPTO’s deadlines and consider other filings when you’re engaging in business that potentially impacts your trademarks. Consult with an attorney experienced with trademarks if you’re unsure whether to submit a filing or need guidance
