Trademark registration is important for your business but maintaining that trademark registered with the USPTO is equally important. USPTO asks you to show evidence that you are using the trademark in commerce after some periods. In certain cases, the businesses either stop doing business or the owner engages in a different kind of business, and keeping their trademark alive will not allow other business owners to use it in the market. It is not good for fair and healthy competition among the businesses. In this article, we will see how to renew a trademark.
Everything You Need To Know about Trademark Renewal
After getting your trademark registered, you should enjoy the benefits it brings along. However, to keep enjoying the benefits of having a registered trademark, you have to do a few important things to keep your trademark registration alive.
- The first thing you have to do is use your trademark in commerce. The term “use in commerce” means that you are using your trademark to sell or transport your goods out of state or provide services to customers who live outside your state. For example, if you live in Mexico and sell your goods to buyers in Georgia.
- You must submit certain documents to show that you are using your trademark in commerce at regular intervals. Failure to showcase evidence/submit documentation before the deadline might lead to cancellation or expiration of your trademark registration, or if your trademark rights are protected under Madrid Protocol, then an extension of protection of your trademark in the US will be invalidated.
Submitting required maintenance documents
While submitting all the required documents for minting your trademark, the business owner is required to submit a signed declaration stating that they continue to use the product or service in all the classes for which they have registered the trademark. They must also submit one specimen for each class of goods or services to satisfy the USPTO that they are still .
The USPTO will check the documents submitted by you and will examine whether they comply with the requirements for maintaining the registered trademark or not. In cases when the registration gets audited, normally, you will be required to submit more evidence/proof related to the use of the trademark in commerce. The proof may be required for each class you have registered before individually. You have to maintain sufficient proof that you are doing commerce in each of the classes; otherwise, you may be required to delete any of the classes not in use in commerce. If that happens, you are required to pay additional fees for each class with deletions.
To prevent risking your registration, you must provide proper maintenance documentation. Only include goods or services that can prove useful in commerce or for which you have requested an exemption.
What if I no longer use any goods or services in commerce?
If you discontinue using your trademark with one or more of the goods or services listed in your registration, you should promptly delete them from your registration. You can do so by filing a deletion request under section 7 to delete those goods and services. You won’t be charged a fee for deleting goods or services in this way between maintenance filings.
What are the deadlines for submitting required maintenance documents?
Once you have registered your trademark, you must file these documents to maintain your trademark registration-
1. File Declaration of use and/or excusable nonuse under section 8 between the fifth and sixth years after registration. The declaration is signed by the trademark owner in which he declares that the trademark is in use in commerce with the goods or services listed in the registration of the trademark is not in use in commerce due to special circumstances that excuse nonuse.
2. File Declaration of use and/or excusable nonuse under section 8 and application for renewable under section 8 and section 9 between the ninth and 10th years after the registration date.
3. Subsequently file File Declaration of use and/or excusable nonuse under section 8 and application for renewable under section 8 and section 9 every ten years after that (between the 19th and 20th years, 29th and 30th years, etc.)
There is a six-month grace period after each of the aforementioned USPTO deadlines. You can file during the grace period, but an extra cost will apply. Your registration will be revoked if you do not file before the grace period expires. Suppose you do not file your trademark after these deadlines. In that case, your trademark registration might be canceled or expired, or if your trademark rights are protected under Madrid Protocol, then the extension of protection of your trademark in the US will be invalidated.
What should I include in the declaration of use or excusable nonuse under section 8?
While along with the declaration that the trademark is in use in commerce, you have to provide the following:
- A list of the goods or services connected to which the trademark is in use.
- A specimen (example of how the trademark is used).
With the declaration of excusable nonuse, you should also provide:
- A list of the goods or services with which the trademark is not used in commerce.
- The date of the last use of the trademark in commerce.
- The approximate date when use in commerce is expected to resume.
- Details regarding the reason for nonuse.
- Specific steps are being taken to resume use.
This is the basics of trademark renewal. If you have any doubts, you can drop us a message, and our attorneys will be delighted to help you with your queries.