Trademark Renewal Sect. 8 & 15 - Keeping Your Trademark Alive
We’ve written before about the importance of registering your business’s branding for a trademark with the United States Trademark and Patent Office (USPTO). But, what happens next? After you’ve been granted trademark registration, how do you keep it?
In this article, we will walk through the major steps in the trademark maintenance process. If you have any questions or concerns about how renewal may impact your company’s trademarks, feel free to reach out to Enterprise Esquire by clicking here and scheduling a one-on-one call.
The First Renewal Deadline
Five years from the date on which your trademark was registered is considered your “anniversary date.” On this date, you are required to file a Section 8 Declaration, also called a Declaration of Continued Use. This filing is an Affidavit stating that your trademark has been in continuous, active, and proper use in commerce for each of the five preceding years. Trademarks that are not kept in active and proper use are subject to challenge or cancellation. To demonstrate how your trademark has been in use, you will also need to file a “specimen” along with your Declaration. A specimen shows how your mark has been used in commerce to identify your goods and services. Examples of a specimen include a photograph of packaging with your trademarked logo on it or some other brand image that shows your trademark identifying your business offerings.
The final deadline for your first renewal is one year from your “anniversary date.” Basically, this means that your Declaration is due to the USPTO on a day between your 5th and 6th anniversaries of trademark registration.
The Second Renewal Deadline
Again, you are required to file a Declaration nine years from your registration date. The deadline for this filing is on a day between your 9th and 10 anniversaries of trademark registration.
Ongoing Trademark Maintenance
After your first ten years of trademark registration, you will still have to continue maintaining the trademark by filing Section 8 Declarations every ten years.
Before the First Deadline, Upgrade Your Trademark to Incontestable
Back between anniversary years 5 and 6, you have an option to upgrade your trademark protection with a Section 15 filing. A Section 15 Declaration is not required and failure to submit it before the sixth anniversary will not result in any penalty. However, there are real benefits to filing a Section 15 Declaration. After 5 years (from the date of trademark registration) of consecutive and continuous use in commerce, a trademark may be declared incontestable.
To be granted incontestability, a mark must be:
1) On the principal register
2) Trademark registration granted between 5 and 6 years ago
3) Trademark is in continuous, active, and proper use for each of the 5 preceding years
4) Not generic (this means that the mark is so commonly used that it no longer identifies a specific source of the good or service, such as “Kleenex”).
On its Section 15 Declaration, the trademark holder also needs to demonstrate that there have been no legal decisions issued against the mark and no challenge to the mark is pending.
An incontestable trademark is known for being “immune to challenge;” however, this is not quite true. Although being granted incontestability is an extension of the trademark protection granted to your mark, it does not actually make your mark impossible to challenge. Instead, it makes it more difficult for challengers to succeed in court.
If the holder of a trademark files suit against an infringer, generally the defendant will try to defend the suit by challenging the validity of the plaintiff’s mark. If the plaintiff’s mark has gained incontestability, any challenge regarding the mark’s distinctiveness (as opposed to descriptive nature) will not succeed. The defendant would only be able to successfully challenge the plaintiff’s incontestible mark if it was able to prove that the plaintiff’s mark was obtained fraudulently, was abandoned through nonuse, or was misrepresenting the source of the goods or services.
An incontestable trademark will continue to benefit from these extended protections unless the mark is abandoned by nonuse or becomes so widely used as to be considered “generic.”
To make filings easier on trademark holders, there is a Combined Declaration form for Sections 8 and 15. This allows trademark holders to file only one Declaration on their first filing deadline between the 5th and 6th anniversaries of their trademark registration. On this Combined Declaration, the trademark holder can 1) demonstrate continuous use and 2) file for incontestability status.
Missing Deadlines is Not an Option
In the past, renewal deadlines would come and go and trademarks would be canceled for failure to renew withuot so much as a reminder or notice from the USPTO. In recent years, the policy has changed. The USPTO will send renewal notices for trademark renewal on the earliest possible dates when renewals may be filed (for the first deadline, this is the fifth anniversary of trademark registration). These notices come to the email you used when registering your trademark, so make sure that you keep an eye on that inbox. Missing a deadline can result in cancellation of the trademark registration.
Although you have one year to file from the anniversary date, we recommend that you file as soon as your anniversary occurs -- don’t wait the full year until the final deadline. If you do, for some reason, miss your one-year deadline, there may be a chance to save your mark. For a penalty fee, the USPTO offers a six month grace period after the final deadline when you can still renew your mark. However, once that extended date passes, you’ll lose your mark.
Get Support if You Need It
At Enterprise Esquire, we want our business owner clients to be able to Focus on Profits, Not Paperwork. So, if the prospect of keeping your trademark alive has you a little worried, reach out to the experienced professionals at Enterprise Esquire. Our goal is always to provide the best possible support and legal guidance to our clients, so you can get back to the business of running your business. Click here to schedule a call with Alexis if you would like to discuss your trademark further.