Trademark Registration Renewal and Maintenance

The Section 8 Declaration of Use is a document filed with the United States Patent and Trademark Office (USPTO) for the purpose of maintaining a trademark registration.  The Section 8 only applies to trademarks that are registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration).  If your trademark is registered with the USPTO under Section 66(a) (extension of protection through the Madrid Protocol), then you would need to file the Section 71 Declaration of Use rather than the Section 8 Declaration of Use.

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The Section 15 Declaration of Incontestability is a document that’s filed with the United States Patent and Trademark Office (USPTO) for the purpose of making a federally registered trademark incontestable.  The Section 15 Declaration may only be filed if (1) the mark is registered on the Principal Register (not the Supplemental Register), (2) the mark is still in use in commerce, and (3) the mark has been in continuous use for five consecutive years subsequent to the date of registration.  Once the USPTO acknowledges the Section 15 Declaration, the trademark owner’s right to use its mark in commerce in connection with the products/services listed in the registration becomes incontestable.  Please note that the Section 15 may be filed in combination with the Section 8 Declaration of Use or the Section 71 Declaration of Use, but it does not have to be.

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Understanding the trademark registration renewal periods is crucial to avoiding inadvertent cancellation of your trademark registration by the United States Patent and Trademark Office (USPTO).  Although a trademark itself can theoretically last forever so long as it’s being used in commerce in connection with the advertising and sale of products or services, a US trademark registration must be maintained and renewed periodically in order keep it in full force and effect.  The good news is that renewing a trademark registration and preventing it from becoming a canceled trademark registration isn’t a very difficult or time-consuming thing to do.  The bad news is that you actually have to remember to meet and comply with the trademark renewal deadlines.  Thankfully, the USPTO will generally send a renewal reminder to the owner of the registration if the owner provided its email address to the USPTO in a previous filing.

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