You have picked a strong trademark, had it searched and filed your intent to use application. All went well and you have a trademark registration. You have created your trademark usage manual. The marketing department has been advised to follow those guidelines and to use the ® symbol next to the mark in advertising. You are doing everything right.
Is it time to just kick back and build brand equity? No.
There are still a few additional issues you need to pay attention to. One of these issues is maintenance of your trademark registration. A trademark registration does not continue indefinitely. It requires tending.
Declaration of Continued Use
A declaration of continued use (under § 8 of the Lanham Act) must be filed during the year preceding the 6th anniversary of the registration date. The declaration can also be filed within a 6 month grace period, upon payment of an additional fee. It is also necessary to file a current specimen showing use of the mark.
If the mark has not been used and the non-use is due to special circumstances that excuse such non-use and is not due to any intention to abandon the mark, then a declaration can be filed setting forth the basis for the non-use. If the basis for nonuse is acceptable, the registration will not be cancelled.
A Declaration of Use (or excusable non-use) must also be filed during the year preceding the 10th anniversary of registration and each successive 10-year period. A six-month grace period is also available.
Declaration of Incontestability
A declaration of incontestability (under § 15 of the Lanham Act) can only be made during the year preceding the 6th anniversary of the registration. A 6-month grace period is available. A declaration of incontestability is not required and, if it is not filed, the registration continues in full force and effect. However, if it is filed and accepted then the registration becomes “incontestable.” This means that the legal bases that can be used to invalidate the registration are restricted. For example, an incontestable registration cannot be cancelled based on it being descriptive; however, it can still be cancelled if it is shown that the mark is or has become generic.
A declaration of incontestability can only be filed if there has been no final decision adverse to the owner’s claim of ownership and there are no pending proceedings involving the owner’s claim of ownership in the PTO or any court.
An application to renew the registration (under § 9 of the Lanham Act) must be filed during the year preceding the 10th anniversary of the registration date and every 10 years thereafter. A six-month grace period is available. A declaration of continued use or excusable non-use must be filed together with the renewal application.
Use on Each and Every Item
One critical issue to watch when filing your declaration of use and any renewal application is that you must review the identification of goods or services in the registration and only claim continued use of those goods that are actually still being offered for sale. If there is use on some but not all of the goods or services listed in the registration, it is critical to delete the goods or services that are not being sold. If this is not done and the declaration and/or renewal application is filed for goods no longer in use, this can be found to be a fraud on the Trademark Office and the registration can be cancelled during litigation.
Our Insight. Your Advantage. It is important not to forget about the health and well being of your trademark registrations. They require regular maintenance to remain in full force and effect, and this requires more than the rote filing of declarations with the Trademark Office. If care is not taken to be sure the declaration is done correctly, you may lose your registration during litigation.
Next week, we will talk about policing your marks.