When Manolo Blahnik said “maintenance is terribly important,” we doubt he was referring to trademark maintenance. Still, it doesn’t make it any less true. When it comes to your trademark registration, “maintenance is terribly important.” It’s the difference between retaining your trademark registration and having it cancelled by the USPTO for your failure to show continued use of the mark. In a nutshell, all trademark owners that wish to maintain their registration must file a declaration of use (or excusable nonuse) between the 5th and 6th year of registration. They must also file an application for renewal between the 9th and 10th year of registration, in addition to another declaration of use. These two filings must be made every 10 years thereafter. We know that’s a lot to digest, so we’ve diced it into bite-sized pieces for you, fees included.
Section 8 Declaration of Use or Excusable Nonuse
A Section 8 Declaration of Use or Excusable Nonuse is a filing that lets the USPTO know whether or not your mark is still in use in commerce, as required by federal trademark law. The Section 8 declaration is due no later than 6 years to the date of your trademark registration. You can file as early as your 5 year trademark anniversary. What better way to celebrate than by saving yourself $100? Because that’s the fee you’ll be assessed for filing your declaration during the 6-month grace period. Failing to file this declaration will result in a cancellation of mark, without the possibility of a renewal. You’ll be required to start the trademark process from the beginning and file a new application. Plus, you run the risk of another person submitting their application before you, since you’ll no longer have priority with the USPTO. Don’t let that be your testimony.
If your mark is still in use, you must include:
- A statement that lists the goods or services in which your trademark is in use, as well as
- A specimen that shows the trademark is being used. Acceptable specimens include tags or labels for goods and advertisements (i.e., a screenshot of your website) for services.
#GeniusNote. Even more important than using the mark is having the correct evidence to prove your continuous use. That’s how you keep ownership of your federal trademark–by using it continuously in commerce. Not sure if your specimen is acceptable? We can help with that.
If your mark is not in use, you may still be able to file a Section 8 declaration so that your mark is not cancelled. You’ll file a declaration of excusable nonuse and include:
- a statement that lists the goods or services in which your trademark is registered in connection with,
- the date of last use in commerce, as well as an approximate date in which you expect to begin using the mark in commerce, and
- details regarding the reason for nonuse and the steps you’re taking to resume use
Whether you file you a declaration of use or nonuse, your filing must also include:
- the registration number of your trademark,
- the name and address of the current owner,
- a payment to the USPTO in the amount of $125 (per class of goods or services)
Once you submit your renewal, you can expect a response in a month or two. Your declaration and/or renewal application will be reviewed by a trademark specialist in the Post Registration Division. If the declaration and/or renewal is acceptable, the USPTO will send a Notice of Acceptance and/or Renewal. If the declaration and/or renewal is not acceptable, the USPTO will send an Office action stating the reasons for refusal and any remedies available. Doesn’t that sound fun?! Good, because you’ll need to do it again in a few years, when you file your Combined Section 8 Declaration of Use (or Excusable Nonuse)/Section 9 Renewal.
Combined Section 8 Declaration of Use (or Excusable Nonuse)/Section 9 Renewal
A Combined Section 8 Declaration of Use (or Excusable Nonuse)/Section 9 Renewal is exactly what it sounds like–another filing. More specifically, it’s the same Section 8 filing you made between the 5th and 6th year of your registration, in addition to a Section 9 renewal. This combined filing is due no later than 10 years to the date of your trademark registration, but can be submitted as early as the 9th year. You are allotted the same 6-month grace for this filing, but the going rate for procrastination $200 now. In addition to satisfying the above Section 8 requirements, you must also submit a Section 9 renewal application, which is a written request to renew your registration. The filing fee for the combined is $425 per class of goods or services. This maintenance filing is due every 10 years and failing to submit it will result in the same consequences as failing to submit a Section 8 declaration, cancellation. Okay. Now, inhale (hold it). Slowly exhale. And repeat. We get it, that was a lot. We don’t want to overwhelm you, but before we go we have to leave you with two of the most common mistakes made by trademark owners during the renewal process.
Free Game | Common Mistakes to Avoid
Failure to Update Ownership Information. Section 8 and Section 9 documents must be filed by the current owner or the attorney of record. If the documents are not filed by the proper owner or the attorney of record, the documents may be refused and the registration could be cancelled.
Filing Inaccurate Information. If goods or services currently identified in the registration are not in use, they should be deleted from the registration when you submit your filings. Otherwise, the registration could be challenged because it contains goods and services that are not in use. Just ask McDonald’s.
Yes, you read that correctly. This is exactly what happened to McDonald’s in January, when the EU IP Office cancelled its famous BIG MAC mark. Even though McDonald’s was using the BIG MAC trademark, they didn’t have the correct evidence to prove that they had continuously used that trademark for the previous five years, and they lost their European registration. Last year, McDonald’s asserted its BIG MAC trademark against a competing Irish burger chain, “Supermac.” They wanted to stop Supermac from opening restaurants in Europe. Supermac asked the European Trademark Office to cancel the Big Mac trademark for non-use. To avoid this, McDonalds needed to prove that they had continuously used their trademark for the previous five years. They had used it, but they couldn’t prove it. Likewise, the EU Intellectual Property Office accepted Supermac’s argument and cancelled the BIG MAC mark. While we’re sure McDonald’s will appeal the decision, WOW! A modern day David and Goliath, for sure.
Need help assistance with your renewal? Or maybe you’re looking to begin the trademark process? Either way, let’s chat. Complete your intake here.