Trademark Renewals and Declarations

Trademark Renewals and Declarations: Keeping Your Brand's Identity Strong

Like the maintenance of all items of serious value, maintaining ownership of trademarks calls for meticulous care and frequent updates. Let's break down the procedure.

1. Why Are Declarations and Renewals Such a Big Deal?

It takes more than just one procedure to register a trademark with the USPTO (U.S. Patent and Trademark Office). The United States Patent and Trademark Office (USPTO) in the United States requires trademark owners to inform them of any updates on the use of their mark.

2. The Section 8 Declaration: Proving You're Still in the Game (or Taking a Short Break)

It is required of you to notify the relevant authorities (the U.S. Patent and Trademark Office, or USPTO) of your decision to continue or pause using a trademark. A Section 8 declaration does exactly that. In essence, it serves as a means for you, the owner of the trademark, to justify your use of the mark or lack thereof.

Essentially, you have two choices:

- Inform the USPTO, "Hey, I'm still using my trademark!"

- Inform the USPTO,"I'm not using it right now, but there's a good reason."

What would happen if you had to temporarily stop using your trademark? If you don't notify the USPTO, they may assume you've given up on it. By filing this declaration, you protect yourself against confusion of this kind and the potential revocation of your trademark registration.

What ought to be mentioned in this statement?

If your trademark is being used actively:

• State that the trademark is currently in use.
• Describe its usage in detail (e.g., products used).
• Show them an example.

If the trademark is not being used by you:

• Explain which products or services aren't using the trademark.
• Specify the last time you used the mark actively.
• Estimate the point when you'll begin using it once more.
• Explain the reason behind the pause.
• Explain the steps you're taking to resume using it.
• Sign off on the truth of your statement.

3. The Section 9 Declaration: Renewal, Keeping Your Trademark Alive

Every ten years, you need to both declare if you're using your trademark (like in Section 8) and ask to keep your registration alive (that's Section 9).

Why does it matter?

Without this renewal, your trademark could be considered abandoned, or as we call it in the trademark world, “dead”.

What ought to be mentioned in this statement?

Regarding trademarks that are currently in use:

• Detail the goods and/or services for which it is being used.
• List where it's applied.
• Provide an example of its use.

Regarding dormant trademarks:

• Detail the goods and/or services for which it's not being used.
• Describe when it was last actively used in commerce and when it is anticipated to return.
• Talk about the reason behind halt in active usage and the plan by which the mark is to be reintroduced into the market.
• Request to keep the trademark registered.

4. Section 15 Declaration: Activating the Incontestability Power

Five years of persistent trademark use entitles you to "incontestable rights." It indicates that nobody can substantially contest the strength or legality of your trademark. It's like having a VIP status for your trademark! It is important to keep in mind that this special status is exclusive to trademarks listed on the "Principal Register."

The Two Paths to Consider:

- "I've had my trademark in the game for five straight years!"

- "No one has ever legally challenged me over my trademark!"

What should you include in this declaration?

- The filing fee of $200.

- A statement that:

- Confirms your trademark has been actively used for five years since its registration or publication date and is still in business.

- Confirms there hasn't been any legal judgment against your trademark's ownership or your rights regarding it.

- Confirms there's no ongoing legal case involving your trademark, either in the USPTO or any court.

- Finally, sign and date the statement, and verify the accuracy of all the details in it.

5. A Simple Timeline Guide

To make sure your trademark registration remains active, follow these steps:

A. Your Trademark's Early Years: Ages 5-6

What to do? File a Declaration of Use and/or Excusable Nonuse under Section 8.

When? Between the 5th and 6th years after the registration date.

• Example: If you received your registration number on January 1, 2020, you would need to file the Section 8 declaration between January 1, 2025, and January 1, 2026.

B. Your Trademark's Pre-Teen Years: Ages 9-10

What to do? Along with the Declaration of Use and/or Excusable Nonuse, now you also file an Application for Renewal. This involves Sections 8 and 9.

When? Between the 9th and 10th years after the registration date.

In Our Example: Continuing from the above, you'd need to file this by January 1, 2029, through January 1, 2030.

C. Your Trademark's Major Milestones: Every Decade Thereafter

What to do? As before, you'd be filing the Declarations of Use and/or Excusable Nonuse and an Application for Renewal under Sections 8 and 9.

When? Every 10 years after your last filing.

In Our Example: Continuing from the above, the next deadlines would be between January 1, 2039, and January 1, 2040, then between January 1, 2049, and January 1, 2050, and so forth.

Keep in mind that the USPTO may send courteous reminders via email on impending maintenance filing deadlines. However, it's important to understand that the onus is still on you.

6. Grace Period: A Little Extra Time

Do not panic if your deadline was missed! You get a six-month "grace period" from the USPTO to file your declarations or requests for renewals. There's a catch, though: there will be an additional cost.

7. Is All This Even Worth It?

Though the Section 8 Declaration and Section 9 Renewal might seem like mere paperwork, they play a huge role. They make sure your trademark is protected legally, especially when you may not be utilizing it frequently. It's about protecting your IP from potential threats and keeping all information regarding your IP accurate and updated.