Trademark Maintenance: Everything You Need to KnowTrademark Law ResourcesTypes of TrademarksHow To Register A Trademark
Trademark maintenance consists of five elements: renewal, cautionary notice, tax, affidavit of use, and proof of renewal of basic registration.8 min read
What Is Trademark Maintenance?
Trademark maintenance involves actions that people or businesses take to keep trademarks they own valid. Trademark maintenance consists of five elements: renewal, cautionary notice, tax, affidavit of use, and proof of renewal of basic registration.
- Renewal: achieved with official filings every 10 years
- Cautionary Notice: used in some countries to show ownership of a trademark
- Tax: trademark owners must pay income tax every year
- Affidavit of Use: also called a Statement of Use and is typically filed with renewal
- Proof of Renewal of Basic Registration: document received from the United States Patent and Trademark Office (USPTO) after renewal
Renewal consists of filing an application containing all trademark and owner data with the relevant Trademark Office. In the United States, the USPTO handles all trademark applications and renewals. This agency asks trademark holders to provide:
- Evidence of the trademark's usage through an affidavit (Declaration of Use of Mark in Commerce) and photographs (Section 8 of the Lanham Act Filing)
- A completed Application for Renewal to renew the trademark's registration (Section 9 of the Lanham Act Filing)
You must file three elements with the USPTO to show trademark use:
- The Declaration of Use of Mark in Commerce . This formal legally binding statement lists items in your registration you sell.
- A photograph or image showing your trademark as the mark appears on your products or in line with your services. This image could be an internet banner ad with your trademark or a website screenshot.
- The required government fees (see Renewal Costs below)
When preparing your declaration, point out which goods are deleted from your registration if you aren't selling them. If you don't, the USPTO may find you've made a false declaration and cancel your trademark registration.
Trademark specialists in the USPTO's Post-Registration Division review all Declarations of Use. If your declaration gets accepted, you'll receive a Notice of Acceptance by mail. If your declaration gets refused, the USPTO sends an Office Action outlining the reasons the USPTO refused your declaration and how you can correct the problem, if necessary.
Trademark owners must file renewal applications in all countries except:
- Comoro Islands
- Nauru and East Timor
Trademark holder should file cautionary notices in the countries listed above instead.
Cautionary notices are legal advertisements placed in publications stating that the trademark owners own their respective trademarks and that no other business or individual may use marks similar to or the same as those marks. Trademark owners then file these notices with their nation's trademark office. If a trademark law exists in that country, this office will give the trademark owners their renewal certificates. If not, attorneys or other legal counsel can give you proof of publication for the advertisement.
Why Is Trademark Maintenance Important?
U.S. trademark maintenance documents tell the USPTO that you are still using your trademark. Under U.S. law, trademark rights, which include federal trademark registrations, only apply for marks being used commercially. If you want to keep your registered trademark, you need to maintain it.
Regular maintenance filings also help with maintenance of the trademark registry. Cancelled trademarks or abandoned trademarks (ones that have no maintenance activity behind them) get removed from the registry so that other people and businesses can use them.
Trademark holders will regularly have two types of USPTO fees.
- Filing a Renewal costs $300 per class of goods for electronic filings and $500 per class of goods for paper filings.
- The Affidavit of Use costs $125 for electronic filings and $225 for paper filings.
Fees are accurate at the time this UpCounsel piece was written, but these fees could change in the future.
Deadlines for Renewal
Intellectual property attorneys make sure that their clients with intellectual property portfolios never miss a filing deadline, because these deadlines are part of the master calendar.
However, most small- to medium-sized businesses, startups, and entrepreneurs may not have intellectual property attorneys who maintain their trademarks and all other intellectual property. If you don't employ a lawyer for handling post-registration filings, you'll need to know when to file the proper documents yourself to keep your trademark registration(s).
You must send trademark registration maintenance documents to the USPTO:
- Between the fifth and sixth year after the registration date ( Declaration of Use of Mark in Commerce)
- Between the ninth and 10th year after the registration date ( Declaration of Use of Mark in Commerce and Application for Renewal )
- Every 10 years after this time for as long as you use the mark for commerce purposes (for example, between the 19th and 20th year) ( Declaration of Use of Mark in Commerce and Renewal)
You'll find your registration date on your registration certificate and listed in the Trademark Electronic Search System . You can find all post-registration filing details on the back of the official registration document.
The USPTO began sending reminder emails about post-registration maintenance filings to all trademark holders with a valid email address on file. Only businesses or people who agreed to receive email communications from the USPTO gets these e-notifications. However, not receiving an email is not a valid excuse for missing a deadline.
If you slightly miss a deadline, don't worry. You'll need to pay a late fee of $100 for electronic filings and $200 for paper filings, but the USPTO will accept your documents as timely if they're filed within the deadline's six-month grace period.
If you don't file within the grace period, your trademark's registration will get canceled. The USPTO cancels registrations on its Principal Register and Supplemental Register if current owners do not file timely declarations during the required time periods. The USPTO cannot waive or extend the deadline for filing declarations. Registrations cancelled because the correct forms weren't filed can't be reinstated or revived. If you lose your registration, you'll need to send a new registered trademark application.
Use Surveillance to Maintain Your Trademark
As a trademark owner, you should use two surveillance approaches.
- Screen competing marks that might confuse consumers. You might find these marks in the marketplace or in the USPTO's trademark database. Sometimes, a concerned member of the public may tell you about the infringement.
- Review your own business and any licensees. Check that your trademark's use meets your own standards of review for advertising, packaging, and promotion. Follow the lead of many well-known brands and prepare a trademark guide. This guide should tell employees how to create and use the company's trademarks and steps to take if they find someone infringing on a trademark.
You should also monitor trademark licensees to make sure their goods or services meet the trademark's quality standard. Trademark licensees are outside people or businesses that share the licensor's trademark for use in commerce. Some trademark owners ask for periodic merchandise samples for review. Other businesses send hired people out to review products being sold in the marketplaces.
For example, a soft drink company might send its own investigators out to restaurants. These investigators order soft drinks and send the samples back to the company for review. This practice can help the soft drink company determine whether the restaurant is using approved soft drink syrup to create the drinks. Now, the soft drink company can maintain the quality associated with its trademarked sodas. If the soft drink quality doesn't meet company standards, then the company can lose consumer confidence in its trademark.
Beware of Scams and Companies With High Fees
When your trademark nears its expiration date, businesses may send letters offering to renew the trademark for you. Many of these businesses are scams. Even legitimate companies charge high prices to complete a simple form that you could complete on your own.
One of these companies is the Center for U.S. Trademark Renewals. This firm can charge $300 or more to complete the renewal paperwork for you. But this fee doesn't cover the USPTO fees, too. The Center for U.S. Trademark Renewals model their letters to look like official U.S. government documents. However, the company states at the bottom of its envelopes that it is not associated with the U.S. government.
Another positive way to look at these solicitations is that they can remind you that your trademark's expiration date is near.
Frequently Asked Questions
- Do I need to be using my trademark to get it renewed?
In most cases, a trademark must be in continuous use to get renewed. You need to file a Declaration of Continued Use by the required deadline (see Deadlines for Renewal above). However, in some special cases, trademark owners can claim excusable nonuse of their marks by filing a Declaration of Excusable Nonuse. These declarations get filed on the same schedule as Declarations of Use.
- I acquired a trademark through a trademark assignment agreement. Am I responsible for maintaining it?
Yes. You should notify the USPTO when you take ownership of a trademark. You are then responsible for maintaining it as if you were the original trademark owner.
- What makes a federal trademark registration incontestable?
An "incontestable" registration is conclusive evidence that the following are valid:
- A registered mark
- The mark's registration
- The owner's ownership of the mark
- The owner's exclusive right to use the mark with declared goods and services
Incontestability claims are subject to certain limited exceptions outlined in Sections 15 and 33(b) of the Trademark Act, 15 U.S.C. Section 1065 and 1115(b). Trademark owners of marks registered in the USPTO's Principal Register who have held their trademark for five consecutive years or more can declare incontestability in a sworn statement. This statement should state the trademark:
- Hasn't become a generic term
- Hasn't been found guilty of infringement
- Isn't currently involved in an infringement case
Marks registered on the USPTO's Supplemental Register cannot claim incontestable rights.
An incontestable trademark cannot be challenged unless the trademark has:
- Become the generic term for goods
- Been abandoned due to nonuse
- Been obtained fraudulently
Declaring incontestability is optional, but it's strongly recommended. Your choice does not affect the registration's term. You can file for incontestability through the USPTO website.
- How much do lawyers charge to help me renew my trademark?
Trademark attorneys typically charge between $300 and $2,000 to help their clients renew their trademarks. These charges do not include USPTO filing fees. The number of classes on the trademark and complications can raise legal fees.
Steps to File
Only the Declaration of Use of Mark in Commerce is required on the sixth-year anniversary of your trademark's registration. On the 10th-year anniversary, and every 10 years after that, you should file the Declaration of Use of Mark in Commerce and a Renewal.
- Visit the USPTO's Trademark Electronic Application System (TEAS) to file an Affidavit of Use and an Application for Renewal. This type of filing is a Combined Section 8/9 filing .
- Complete all fields and attach images showing use of your trademark.
- Enter your credit card details into the website to pay the filing fees.
- Repeat these steps every 10 years to maintain registration.
You can also file a paper application by mail, although this filing costs $300 more for the Combined Section 8/9 filing.
Get Legal Help With Trademark Maintenance
If you need with maintaining your company's trademarks, you can post your legal need or concern using UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel represent law schools such as Harvard Law and Yale Law and average about 14 years of legal experience, including with work or on behalf of companies such as Google, Menlo Ventures, and Airbnb.