Mark registered… now what?

You have registered your mark and it has been approved.  Congratulations!!! But now… what?

Mark registrations on the USPTO need maintenance to keep them “alive”. 

Some of the maintenance things you need to do to maintain your registration are:

·        Continue to use your trademark in interstate commerce.

·        File your registration maintenance documents with the USPTO, and pay the required fees, at the required times.

·        Keep your correspondence information updated.

What maintenance documents do you need to file with the USPTO

1.      Between the years 5-6 you need to file what it is called a Section 8 Declaration of Use.  This is a form that requires a verified statement of use in commerce of the mark, a specimen for each class in which that mark has been registered and a fee per class.  This is required.

2.      Between the years 9-10 and then every decade you need to file a Section 8 Declaration of Use as you already did between years 5-6 and a Section 9 Application for Renewal.  This added Section 9 is a request to renew the registration before it expires.  It includes a fee per class in which the mark is registered.  This is also required.

Besides this filing there are others that are optional.

1.      After 5 years of continuous use you can file a Section 15 Declaration of Incontestability.  This form includes a statement claiming incontestable rights as to the validity of the registration, and includes a fee per class.

2.      You can also file after 5 years of continuous use and between the year 5-6 the Section 15 mentioned before combined with Section 8 Declaration of Use which is required.

To file this documents you need to continue using your trademark in interstate commerce.  If you discontinue to use your mark in interstate commerce, you won’t be able to file the required documents and keep your registration “alive”.

 If you don’t submit your maintenance documents and fees by the deadline, your registration will expire or be canceled. 

 What happens If I don’t submit my maintenance documents with their respective fees by the deadlines given and my registration expires or is canceled?

 What every mark owner fears.  You will no longer have a registered mark with the USPTO and you will need to refile, and start the application process over all over again to have the protection that the USPTO offers to your mark.

 Maintenance

 As you can see, to have the legal rights that the USPTO registration gives to a mark does not finishes with the registration of it.  It includes a lifetime maintenance.  Without the due maintenance the mark will be cancelled.

Remember…

 The registration of a mark is not an easy task.  There are a lot of things that can go wrong and that can result in a rejection of your mark filing.  After this complicated task is achieved you need to keep filing documents with the USPTO to keep your mark “alive”.  If a document misses it deadline the mark again can face cancellation and you can loose your rights.  Since this is all a complicated and time sensitive process there are attorneys that concentrate their practice in protecting marks for different clients.  It is recommended that if you want to registered a mark and maintain it for your business you contact a trademark attorney to help you. 

This is a recommendation that even the USPTO gives as you can read in their website:

Do I need an attorney? | USPTO

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