Do I have to verify with the U.S. Patent and Trademark Office that I am still using my mark?
Yes. A trademark owner must submit a Declaration of Continued Use within the filing window to maintain registration of a mark, as mandated under the Trademark Act, 15 U.S.C. §1058. A Declaration of Continued Use is a sworn statement filed by the owner of a registration that the mark is in use in commerce. In special cases, an owner may claim excusable nonuse of the mark by filing a Declaration of Excusable Nonuse. Untimely, incomplete, and noncompliant declarations will result in cancellation of a mark, removing the mark the register.
The owner of the registration must first file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th years after the registration date, as mandated by 15 U.S.C. § 1058. If the declaration is accepted, the registration will continue in force for the remainder of the initial ten-year period from the registration date, unless cancelled by an order of the Commissioner for Trademark or a federal court. Subsequent Declarations of Use (or Excusable Nonuse) and an appropriate application for renewal must be filed between each 9th and 10th year following the registration date, continuing so long as maintenance of the registration is desired. In many cases, the above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee.
Declarations of Use are reviewed by trademark specialists in the Post-Registration Division of the U.S. Patent and Trademark Office. If the declaration is accepted, the USPTO will send a Notice of Acceptance to the owner. If the declaration is refused, the Office will send an Office Action stating the reasons for refusal and remedies available if any.
Will my registration be cancelled if I do not file the appropriate Declaration of Continued Use?
Yes. The U.S. Patent and Trademark Office will cancel any registration on either the Principal Register or the Supplemental Register if a timely declaration is not filed by the current owner of the registration during the prescribed time periods. The USPTO has no authority to waive or extend the deadline for filing a proper declaration. Registrations cancelled due to the failure to file a Declaration of Continued Use cannot be reinstated or “revived.” A new application to pursue registration of the mark again must be filed.
Do I have to renew my federal trademark Registration?
Yes. Subject to the filing of required declarations and applications for renewal, federal trademark registrations issued on or after November 16, 1989, remain in force for 10 years, and may be renewed for 10-year periods. Trademark registrations issued or renewed prior to November 16, 1989 remain in force for 20 years, and may be renewed for 10-year periods.
To renew a federal trademark registration, you must file an Application for Renewal under the Trademark Act, 15 U.S.C. §1059 in conjunction with a Declaration of Continued Use (or Excusable Nonuse). The owner must file a declaration asserting use or excusable nonuse and an application for renewal between each 9th and 10th years succeeding the registration date. See 15 U.S.C. § 1059. In some cases, the above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee.
The USPTO has no authority to waive or extend the deadline for filing a proper renewal application. Registrations cancelled due to the failure to file a renewal application cannot be reinstated or “revived.” A new application to pursue registration of the mark again must be filed.
Renewal applications are reviewed by trademark specialists in the Post-Registration Division. If the renewal application is accepted, the USPTO will issue a notice granting the renewal. If the renewal is refused, the USPTO will send an Office Action stating the reasons for refusal and remedies available if any.
What makes a federal trademark registration incontestable?
An “incontestable” registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 1115(b). Incontestability is asserted in a sworn statement filed by the owner of a mark registered on the Principal Register, claiming “incontestable” rights in the mark for the goods/services specified. Marks registered on the Supplemental Register are not eligible for claims of incontestable rights.
Riling of a Declaration of Incontestability is optional. An owner may choose to claim the benefits of incontestability by filing an appropriate declaration or may elect to retain the registration without those benefits. The term of the registration, for purpose of renewal, is not affected in either event.
When can I claim that my mark is incontestable?
A declaration claiming incontestable status may not be filed until the mark has been in continuous use in commerce for at least five consecutive years subsequent to the date of registration for marks registered under the Act of 1946 (and subsequent to the date of publication under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), for marks registered under the Acts of 1905 and 1881 for which the benefits of the Act of 1946 have been claimed). Declarations asserting incontestability must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce.
The USPTO neither examines the merits of declarations claiming incontestability nor “accepts” such declarations. However, the USPTO will review a declaration claiming incontestable status to determine whether it complies with statutory requirements. The USPTO will acknowledge receipt of only those declarations that meet all statutory requirements. Declarations for registrations issued under Section 69, 15 U.S.C. §1141i, may only be filed in accordance with the specific time requirements outlined in Section 73. 15 U.S.C. §1141m. Section 73 itself does not require a separate filing, but rather only establishes the time for filing.
What is a §71 Declaration of Continued Use?
Holders (owners) of registered extensions of protection to the U.S. (also called §66(a) registrations, registrations resulting from 79′ series applications, international registrations extended to the U.S.) who wish to maintain the protection granted their mark in the U.S. pursuant to the Madrid Protocol must file an affidavit or declaration of use in commerce or excusable nonuse to avoid cancellation of protection in U.S. Such affidavits are required pursuant to Section 71, 15 U.S.C. §1141k, of the Trademark Act. The USPTO has no authority to waive or extend the deadline for filing a proper §71 Declaration. Registrations cancelled due to the failure to file a §71 Declaration cannot be reinstated or “revived.” A new application to pursue registration of the mark again must be filed.
Must I file any other maintenance documents in addition to §71 Declarations?
Yes, the holder of a registered extension of protection of an international registration to the U.S. must file an application for renewal the international registration with the International Bureau (IB). 37 C.F.R. §7.41(a). Renewal of international registrations is governed by Article 7 of the Madrid Protocol and Rules 29 – 31 of the Common Regulations under the Madrid Agreement and Protocol.
How do I renew my Registered Extension of Protection?
Requests for renewal of an international registration must be filed directly with the International Bureau (IB). 37 C.F.R. §7.41(a) A renewal can be filed during the six months before expiry of the period of protection or in the six months following the expiry of the current period of protection with the payment of a surcharge.
The term of an international registration is ten years, and it may be renewed for ten years upon payment of the renewal fee. Articles 6(1) and 7(1). There is a renewal form available on the IB website.
Should I hire an attorney?
Trademark registration and maintenance is complex. Although not required, most owners use private trademark attorneys for legal advice regarding use of their trademark, registration of a mark, and the unique issues for maintaining a federal registration, since not all registration remain valid perpetually. A private trademark attorney (not associated with the USPTO) may help you avoid many potential pitfalls.
For more information relating to representation for preparation, filing, examining, and maintaining your federal trademark registration, contact a trademark law firm such as Nyman IP at email@example.com or 312.487.2532.
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