Maintaining Your Trademark

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Many people already realize the importance of registering a trademark with the United States Patent and Trademark Office (USPTO) and how important it is to have an attorney assist in the process.  However, the process is not over once a registration is granted.  The registration needs to be maintained or the trademark owner can lose its trademark rights.  Thankfully, a trademark lawyer can oversee the post-registration process so the trademark owner does not have to worry about missing statutory deadlines.

The USPTO wants to ensure that all registered marks remain in use.  Unused marks will return to the public domain so that other parties can make use of the marks.  To make sure the trademark owner is still using the mark, the USPTO requires a Declaration of Use or Excusable Nonuse be filed anytime between the 5th and 6th year after a mark is registered.  There is a six month grace period after the sixth year.  If no declaration is filed after this grace period, the mark is considered canceled.   This documentation is not required every six years thereafter.

More paperwork is due before every ten year period of registration.  Similar to the sixth year requirement, the trademark owner has one year before the end of a ten year period to file a Combined Declaration of Use or Excusable Nonuse/Application for Renewal.  This documentation must be submitted every ten years for the life of the mark.   Again, failure to submit this documentation results in cancelation of the mark of an expiration of the registration.

If the trademark registration is expired, the trademark owner will have to start the registration process all over again and treat the mark as new.  The only exceptions are if the USPTO makes an error and inappropriately cancels the mark, or if the documents get lost in transit.  Any claim to incontestability will be gone until the new registration reaches five years.