Iowa Intellectual Property Blog
I have a registered trademark (or service mark) – Now what?
Jul. 2, 2013 – Janet E. Phipps Burkhead, Iowa Intellectual Property Blog
Once your mark registers with the United States Patent and Trademark Office (USPTO), there are ongoing requirements to keep you mark registered. First of all, it is important to have continuous use of your mark with the goods or services identified on the registration certificate in the form your mark registered with the USPTO (e.g., style, color, font, etc.). Following are the important timeframes to keep in mind to maintain registration.
Section 8 Declaration
A Section 8 Declaration of Continued Use or Excusable Nonuse must be filed periodically during the life of a registered mark. The first time is between the fifth and sixth years from the date of registration and then every ten years from the date of the mark’s registration. The Section 8 Declaration is a sworn statement filed by the owner of the registration attesting that the mark is in use in commerce. If the mark is not being used but there is intent to resume its use, the owner may make a claim of excusable nonuse of the mark at this time; however, this nonuse is only for special circumstances.
The purpose of a Section 8 Declaration is to remove marks no longer in use from the USPTO register. If the Section 8 Declaration is not filed in a timely manner, the USPTO will cancel the registration. This timeframe is unforgiving – if it is missed there is no waiver or extension available. A new application to pursue registration of the mark again must be filed. A Section 8 Declaration and a Section 15 Declaration (see below) may be filed at the same time between the fifth and sixth years.
A Section 15 Declaration provides an option to claim a mark is “incontestable” when the mark registers on the Principal Register and has been in continuous use for five consecutive years subsequent to the registration date. This Section 15 can be filed as early as the fifth year following the date of registration or some date after that as long as the five consecutive year requirement has been met.
Incontestability provides greater protections for your mark. Once a mark is deemed incontestable, the mark cannot later be challenged on the grounds of validity, registration, or ownership (typically including descriptiveness, functionality, failure to function as a trademark, or that the mark is primarily merely a surname or geographically misdescriptive). A Section 15 need only be filed once within the life of the registration.
10-Year Renewals (Section 8 & 9)
To maintain registration of your mark, a request for renewal must be filed every ten (10) years from the date of registration. Before the end of each ten year renewal period, a Section 8 Declaration (same as filed between the fifth and sixth years attesting to the use of the mark in commerce) and a Section 9 Application for Renewal must be filed. These are generally combined into one application and submitted to the USPTO.
With Section 8 and Section 9 submissions, the USPTO issues a notice of acceptance granting the requested action. A Section 15 submission is not “accepted” by the USPTO, but rather is examined to determine if it complies with the statutory requirements. A Section 15 Declaration is noted on the USPTO’s website under the registered mark.
As a client of our law firm, we docket and monitor the above dates carefully and provide notice to you well ahead of time to insure that the appropriate submissions are made to the USPTO in a timely manner.