November 30, 2017,

Trademark Maintenance Documents

Trademark Maintenance Documents

Earlier this year, I wrote about 10 important reasons to obtain a registered trademark. As a trademark attorney, I was surprised to find out that many owners of federal trademarks, especially those that filed the application themselves, do not know that they need to file additional documents to keep their trademark registration active.

How to Keep your Trademark Registration Active

After you obtain a federal trademark registration, you must file additional documents with the U.S. Patent and Trademark Office (USPTO) on a regular basis. Maintenance documents must be filed:

    – between the 5th and 6th year anniversary of the date of your registration
    – between the 9th and 10th year anniversary
    – every 10 years thereafter

The Declaration of Use, or Section 8 Declaration, must be filed between the 5th and 6th year anniversary of the date of registration. The date of registration is the date that your trademark is issued a registration number, not the date that your trademark application is filed. A Section 8 Declaration and an Application for Renewal, or Section 9 Declaration, must be filed between the 9th and 10th year anniversary and every 10 years thereafter. If you fail to timely file your maintenance documents, your trademark registration will be cancelled.

Declaration of Incontestability: Optional Post-Registration Filing

In addition to the Section 8 Declaration, after you have continuously used your trademark for five years, you can file a Declaration of Incontestability. Filing a Declaration of Incontestability is not required to keep your trademark registration active. Incontestability provides automatic proof of the validity of the mark, the registration of the mark, ownership of the mark and the owner’s exclusive right to use the mark. A trademark that has become incontestable is very powerful because it can only be challenged on the basis of abandonment (nonuse) or fraud.

How Johnson Moss Can Help

An experienced trademark attorney should know about the deadlines for filing your maintenance documents and ensure that all required maintenance documents are filed correctly and on time. The trademark attorney should also explain why it’s so important to file a Declaration of Incontestability, even though it is not necessary to keep your trademark registration active. At Johnson Moss Law, we can help you with all of your trademark legal needs.