Maintating A Trademark Registration

Registration of a mark does not automatically grant continued protection of the mark forever. It is necessary to file certain documents attesting to the continued use of the mark in order to claim continued protection. This chapter explains these requirements and the process and steps to be taken to ensure continual protection after registration of the mark.

The U.S. PTO requires the filing of a Section 8 affidavit between the fifth and sixth year after issuance of registration of a trademark, or within the 6 month grace period after the expiry of the sixth year deadline with an additional fee of $100. The Act further provides that failure to file the affidavit within the fifth and sixth year of registration of a mark or within the six month grace period will result in cancellation of the trademark registration.

The Section 8 affidavit is basically an affirmation that the mark is still in use in commerce. “Use in Commerce” is defined by the Trademark Revision Act of 1988 as, a “bonafide use of the mark in the ordinary course of trade and not made merely to reserve a right in a mark”. The affidavit should state the reason of non-use and confirm that the non-use of the mark is not due to an intention to abandon the mark. It is important to note that non-use of the mark in commerce will be excusable only if it occurred due to factors beyond the registrant’s control.

The 1988 Act provides that a Section 8 Affidavit must include the same information required for a renewal of a mark, that is, a statement of use in commerce as to at least some of the goods and services described in the registration and the submissions of specimens evidencing such use (15 U.S.C §1058 a). A specimen is required to be submitted for each class of goods or services protected by the registration in accordance with the U.S. PTO rules such as acceptable pixel count, resolution count, etc.

It is important to remember that false statements made in a Section 8 Affidavit constitute fraud on the U.S. PTO and may result in cancellation of the registration. Therefore, the specimen filed must be one that is in fact used in commerce and not created only for the sake of filing the affidavit within the deadline but in actuality has never been used on the goods and services.

The following documents and fees have to be submitted with a Section 8 Affidavit:

1. The registration details such as the mark, the registration number and the date of registration.
2. List of the goods/services currently used in commerce or at least some of the goods/services. If the mark is not in use in commerce, the reason of non use and a statement attesting to the absence of the intention to abandon the mark.
3. A specimen of the product or service displaying the mark on the product or showing the mark in advertisement of the service
4. Filing fee of $100 per class
5. If filed after the sixth year but within the six month grace period, an additional fee of $100 per class must be paid.

Once an application is registered, it can no longer be cancelled on the grounds of prior use or descriptiveness. However, filing an affidavit of incontestability grants an “incontestable” status to the registrant. This means that the registration becomes conclusive evidence of the registrant’s ownership and exclusive right to use the mark. A filing of the affidavit of incontestability also grants immunity to the mark from attacks on the basis of descriptiveness.

For a Section 15 Affidavit, the following documents and fees need to be filed:

1. The registration details such as the mark, the registration number and the date of registration.
2. A statement attesting that the mark has been used in commerce continually for 5 consecutive years from the date of registration on the goods or services identified in the application.
3. Proof of ownership of the mark and the absence of any final decisions to the contrary
4. A filing fee of $200 per class.

It is important to note that if the mark has been used for only some of the goods or services recited in the registration, then only those goods and services must be specified in the statement of continuous use.

Once an application has been registered, this registration needs to be renewed every ten years after the date of registration. In order to renew the registration, the following documents and fees need to be submitted with the United States Patent and Trademark Office:

1. A statement of continued use, also known as a 10 year Section 8 Affidavit mentioning the goods or services used in connection with the mark as covered in the registration. Or A showing of the non-use of the mark and that the non-use is not due to any intention to abandon the mark. The same requirements that pertain to a Section 8 Affidavit with regard to non-use of a mark apply for the statement of non-use.
2. Specimen for each class of goods or services covered by the registration.
3. Filing fee of $400 per class for the application of renewal.

If the owner of the mark believes that there has been a material alteration to the mark over the 10 year period, he has the option to make a formal application to amend the mark in the registration under Section 7(e). However, this is not mandatory if the change made is not a material change.

Also, if the mark is no longer used on certain goods or services recited in the registration, these goods and services must be deleted on filing the statement of use affidavits and renewals. However, if the mark is used on additional goods or services, the registration cannot be amended to add these goods and services, although a new application may be filed for the same.

Apart from maintaining a trademark registration by filing the Declaration of Continued Use and Declaration of Incontestability, a trademark owner is obligated to maintain the rights associated with the trademark in order to retain his ownership of the mark. Maintenance of trademark rights must be taken seriously to avoid infringement notices and cancellation of registration of the mark.

The most important requirement is that the applicant must use the mark continuously in interstate commerce. This means that if the mark is registered on the Principal Register, the mark must be used in a lawful trade continuously in interstate commerce in order to retain trademark rights. If the mark has not been continuously used, the Trademark Office will remove the mark from the Principal Register and the registration will be cancelled on the grounds of ‘non-use’. This is particularly important if the trademark owner is alleging trademark infringement against a third party. If the third party can show proof to the Trademark Office that the registered mark has not been in use for a substantial period of time, the office will cancel the mark and the trademark owner will lose his rights to that mark. The trademark owner will be given the opportunity to show intent to use the mark in commerce.

What To Do	What Not To Do
Once registered, use the registered mark (exactly as registered) in interstate commerce. Use the mark on your stationery, packaging of goods, signs advertising your goods/services etc	Do not change the registered mark, the logo or design when using the mark in commerce. You may need to register the modified mark to claim its protection.
Place the ® symbol next to your mark once it is registered	Do not use the ® symbol next to your mark before it is registered. You may place the TM or SM symbol next to your mark until registration
Look out for potential infringers and protect your mark from infringers	Do not send a cease and desist letter to an alleged infringer of your mark or start any infringement proceedings without consulting an attorney
File a Declaration of Continued Use (Section 8 affidavit) between the 5th and 6th year from the registration date with the prescribed fee	Do not forget to remove the classes of goods/services or description of goods/services that have not been in continuous commercial use for the last 5-6 years when filing a Section 8 affidavit.
File a Declaration of Continued Use (Section 8 affidavit) between the 5th and 6th year from the registration date with the prescribed fee	With regard to the reason of non use, do not state a reason that was within the Applicant’s control. A statement of Excusable Non Use will be accepted only if the reason for non use was beyond the Applicant’s control.
Optional: File a Declaration of Incontestability under Section 15 with the prescribed fee between the 5th and 6th year from registration date.
After 10 years of registration, file a combined Declaration Of Continued Use or Excusable Non-Use with an Application For Renewal with the prescribed renewal fee.