Maintaining a registered trademark is essential to ensure its validity and protection. To maintain a registered trademark, owners must follow specific steps and meet certain requirements set by the United States Patent and Trademark Office (USPTO). Firstly, it is important to note that unlike patents and copyrights, trademarks do not expire after a set period of time. They will persist as long as the owner continues to use the trademark in ordinary commerce. However, there are certain filings and renewals required to keep the trademark registration active.
Trademark maintenance consists of five elements: renewal, cautionary notice, tax, affidavit of use, and proof of renewal of basic registration. To maintain your federal registration, you must regularly demonstrate use throughout the life of your trademark.
A maintenance document must be filed six years after your trademark reaches registration. This filing, known as a Section 8 or Section 71 maintenance filing, serves to provide the USPTO with evidence and assurance that the trademark is still being used in commerce. The exact deadline for this filing is on the six-year mark following the date your trademark reached registration. If you miss this deadline, there is a six-month grace period during which you can still file your maintenance filing by paying an additional penalty fee.
After the initial maintenance filing, a renewal must be filed four years later, and then every ten years thereafter. These renewals are covered under Section 9 of the Lanham Act. It is crucial to check the status of your registration at least every six months after filing any post-registration documents to ensure timely renewals and maintenance filings.
When it comes to hiring an attorney for your trademark renewal or maintenance filing, it is recommended to do so right around when your one-year filing window begins. This allows the attorney enough time to gather sufficient evidence of your trademark's use in commerce. If the USPTO has any issues with your maintenance or renewal filing, it is easier to respond to their concerns if you are still within your filing window.
In summary, to maintain a registered trademark, owners must file a maintenance document six years after registration, followed by a renewal four years later and then every ten years thereafter. Regularly demonstrating use of the trademark and keeping track of filing deadlines are essential to maintaining the registration and its benefits. Hiring an attorney to assist with the process can ensure that all requirements are met and the trademark remains protected.
