Keeping Your Trademark ‘Healthy’
It is well accepted that each of us, to maintain our health, should have periodic medical and/or dental examinations. Likewise, most people maintain their motor vehicles with a periodic tune-up and test.
Many businesses and entrepreneurs invest their valuable resources to register their trademarks in order to have exclusive use of the mark in connection with their goods and/or services and protect the mark against infringement by others. However, they fail to periodically complete ‘health’ checks on this investment. An annual review of one’s trademarks is an inexpensive but important part of maintaining the good health of an important asset.
Renewal
It is insufficient to initially register a trademark and then forget about maintaining the registration’s active status. Federal law and regulation require renewal of a trademark. Between the ninth and tenth years from the registration date, the owner must submit a Section 9 (of the Trademark Act) “Application for Renewal” along with the official USPTO fee. Each and every ten years thereafter, the owner of the mark must file another “Application for Renewal” to maintain registration of the mark. As of the date of this article, the fee for renewal is $400 for each class in which the trademark is registered.
In addition to renewal, U.S. law requires that a trademark owner file a one-time declaration that the mark registered is in active use in commerce in connection with the goods and/or services for which the registration was originally granted. The Section 8 “”Declaration of Use” must be filed between the fifth and sixth years after the registration date. As of the date of this article, the fee for renewal is $100 for each class in which the trademark is registered. Failure to file the Section 8 “Declaration of Use” will result in cancellation of the registration of the trademark. The computerization of the USPTO’s records insures that such a failure will come to the attention of USPTO staff and the process will eventually occur.
Declaration of Incontestability
Once the owner’s registered trademark has been in continuous use in commerce for a period of five (5) years after the date of registration, and there is no pending proceeding and/or no final decision against the owner’s claim of ownership of the mark or the right to register the mark, and the owner has complied with the Section 8 Declaration of Use described in the preceding paragraph, the owner may apply for incontestability status. The only vulnerability of a trademark deemed incontestable is fraud in the application to register the mark.
Incontestability is a valuable and potent right to ward off any future attacks and infringing marks.
Change of Address or Agent
At the time of the application, the owner submitted an address and other contact information at which the owner could be contacted and given official notice. The owner/applicant may also have appointed an agent to receive such notice. In time, companies and agents relocate. Failure to update the owner’s registration may cause an important notice, such as a petition to cancel the trademark or a notice from the USPTO affecting validity of the mark, not to be received by the owner. The USPTO is under no obligation to find the owner; the owner must maintain an accurate, up to date record.
Updating your official registration information is, mostly, free of charge.
SWA can assist you to assess the ‘health’ of your trademark and to update your registration.
Alan Barth is a trademark attorney at Schwell Wimpfheimer & Associates LLP and is also a member of the derivatives and energy practice groups. He has prosecuted trademark applications and handled a variety of contested matters before the USPTO. Alan can be reached at abarth@swalegal.com or 646 328 0784.
This SWA publication is intended for informational purposes and should not be regarded as legal advice. For more information about the issues included in this publication, please contact Alan Barth. The invitation to contact is not to be construed as a solicitation for legal work. Any new attorney/client relationship will be confirmed in writing.
Filed Under: Publications , Trademarks
Dr. Jeannette Wibmer
September 8, 2010
Dear Alan
I fully agree and stress, that a TM owner must register, use and renew its TM also outside the US, should it wish to be protected there as well.
In particular the Madrid Union and the EU Common Market TM offer interesting opportunities in this respect.
Best, Jeannette Wibmer