Hut 8, Hut 9, Hut 15!
By Shannon Moore
I haven't a clue if I used the correct football reference but let's go with it because it fits with the subject of this post.
How do you maintain your Federal trademark?
A trademark can be owned indefinitely as long as the applicant stays on top of all the various forms the USPTO requires.
First up is the Section 8 Declaration of Continued Use -
Here's the USPTO's definition:
"a sworn statement, filed by the owner of a registration that the mark is in use in commerce...It must be filed by the current owner of the registration and the USPTO must receive it during the following time periods: 1) At the end of the 6th year after the date of registration...AND 2) At the end of each successive 10-year period after the date of registration. There is a six-month grace period. If these rules and deadlines are not met, the USPTO will cancel the registration."
This is a form letting the USPTO that you're still actively using the mark. Basically, this is a sort of weeding out process if you will. Trademarks MUST be used in order to keep their registration.
Two deadlines for this form:
(1) between the 5th & 6th year from the date of registration, e.g. your mark became registered on October 31, 2002 so that means your Section 8 is due anytime between October 31, 2007 to October 31, 2008. (2) by the end of a 10 year period after the date of registration, which includes the FIRST 10 year anniversary, even though you'd have just filed it four years prior.
Section 9 Renewal Application -
Again, from the USPTO:
"a sworn document, filed by the owner of a registration, to avoid the expiration of a registration. Federal trademark registrations issued on or after November 16, 1989, remain in force for 10 years, and may be renewed for 10-year periods...The §9 Renewal Application may be filed one year prior to the registration expiration date or during the 6-month grace period immediately after the date of expiration. If the §9 Renewal Application is not filed or is filed after the grace period ends, the registration will expire.
Because the due date of the 10-year §8 Declaration coincides with the due date of the §9 Renewal Application, the USPTO created a form entitled "Combined Declaration of Use in Commerce and Application for Renewal of Registration of a Mark Under Sections 8 & 9"
This one's easy to get. The Section 9 is the application to renew your mark for another 10 years. And since the due date coincides with the due date for the Section 8, you can file just one form for both.
Section 15 Declaration of Incontestability -
From the USPTO:
"a sworn statement, filed by the owner of a mark registered on the Principal Register, claiming 'incontestable' rights in the mark for the goods/services specified. An 'incontestable' registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner's ownership of the mark and of the owner's exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions...
Filing a Section 15 Declaration is optional. However, there are certain rules governing when one may be filed...The §15 Affidavit must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce.
Marks registered on the Supplemental Register are not eligible for claims of incontestable rights under §15."
Okay, a couple of things here - your mark has to be on the Principal register; you've got to wait until the 5 year mark from registration; and again, the due date coincides with the Section 8, so you can file one form for both.
Shannon Moore is the General Manager for TradeMark Express. Since 1992, TradeMark Express has met the needs of their clients with comprehensive research, application preparation, attorney referrals and trademark consultation. For further details, please visit us on the web at www.tmexpress.com/index.php.