Registering a trademark is a long and involved process, but it is certainly worth the effort. A registered trademark is certainly preferable, especially if your mark is ever challenged by a competitor. Even after a trademark registration is issued however, trademark owners must file specific documents and pay fees at regular intervals to keep their registered trademark “alive”. Failure to do so can result in cancellation of the trademark registration.
The First Filing Deadline
The first filing deadline is for a Declaration of Use (or Excusable Nonuse). The deadline falls anytime between the fifth and sixth years after the initial registration date. Upon acceptance, the registration will continue in force for the rest of the ten-year period that began with the original registration date.
Subsequent Filing Deadlines
A Declaration of Use and an Application for Renewal must be filed between the ninth and tenth years after the initial registration date. Thereafter, the same documents must be filed between every ninth and tenth year for the duration of the trademark.
What Happens if You do not File on Time?
If you do not file the proper documents within the accepted time frame, the USPTO will cancel your trademark registration on either the Principal Register or the Supplemental Register. If your registration is cancelled because you failed to file the Declaration of Use or the Application for Renewal, it cannot be reinstated or “revived.” Your only option is to submit a new application to pursue registration of the mark. However, it is worth noting that the documents mentioned above will be accepted if filed within six months after the deadline, as long as they are submitted with an additional late fee.
I would be happy to assist you with any part of the trademark maintenance or renewal process. Keeping your trademark registration up to date and in force is the best way to ensure its protection.
Kelly G. Swartz is a patent attorney licensed to practice in front of the United States Patent and Trademark Office and in the state of Florida. She limits her practice to intellectual property law including patent, trademark, copyright, and trade secrets.