Trademark Renewals and Declarations: Keeping Your Brand's Identity Strong

If you've ever owned something valuable, you know how crucial it is to take care of it. Similarly, for trademarks, keeping your ownership requires attention and timely updates. Let's break down the process.

1. What's the Big Deal with Renewals and Declarations?

When you register a trademark with the USPTO (U.S. Patent and Trademark Office), it's not just a one-and-done deal. In the U.S., the United States Patent and Trademark Office (USPTO) expects trademark owners to keep them updated about their trademark's usage.

The Big Players: Section 8 & Section 9

2. The Section 8 Declaration: Proving You're Still in the Game (or Taking a Short Break)

What is it?

You need to tell the authorities (the U.S. Patent and Trademark Office or USPTO) whether you're still using this brand name or not. That's what a Section 8 declaration does. It's essentially a way for you, the trademark owner, to explain how you're using your mark or why you're not.

You basically have two options:

· Tell them, "Hey, I'm still using my trademark!"

· Or, "I'm not using it right now, but there's a good reason."

Why is it so important? Imagine if you had to stop using your trademark for a while. Without telling the USPTO, they might think you've abandoned it. This declaration saves you from such misunderstandings, and the possible cancellation of your trademark registration.

What should you include in this declaration?

If you're actively using your trademark:

· Assert that the trademark is active.

· Detail where it's being used (like on which products).

· Show them an example – like a tag on a product or an advertisement.

If you're not using the trademark:

· Explain which products or services aren't using the trademark.

· Tell them when you last used it.

· Estimate when you'll start using it again.

· Share the reason for the pause.

· Mention what you're doing to get back to using it.

· Sign off on the truth of your statement.

3. The Section 9 Declaration: Renewal, Keeping Your Trademark Alive

What is this?

Every ten years, you need to both declare if you're using your trademark (like in Section 8) and ask to keep your registration alive (that's Section 9).

Why is it important?

Without this renewal, your trademark could be considered abandoned, or as we call it in the trademark world, “dead”.

What should you include in this declaration?

For active trademarks:

· Declare its use.

· List where it's applied.

· Provide an example of its use.

For inactive trademarks:

· Detail where it's not being used.

· Share its last active date and the expected return date.

· Discuss the pause reason and resumption plans.

· Request to keep the trademark registered.

4. The Section 15 Declaration: Unlocking the Power of Incontestability

What is this?

After using your trademark consistently for five years, you can claim "incontestable rights." It means that, in most cases, no one can challenge the strength or validity of your trademark. It's like having a VIP status for your trademark! They can't easily question your trademark's validity anymore. But remember, this special status is only for trademarks on the "Principal Register."

The Two Roads to Take:

· Shout out, "I've had my trademark in the game for five straight years!"

· Or, "No one has ever legally challenged me over my trademark!"

Why is it important?

Making your trademark incontestable is like having an elite VIP pass. It provides an added layer of protection, so the validity of your trademark can't easily be questioned by outsiders. Think of it as adding an extra security layer to your trademark.

What should you include in this declaration?

· The filing fee of $200.

· A statement that:

· Confirms your trademark has been actively used for five years since its registration or publication date and is still in business.

· Confirms there hasn't been any legal judgment against your trademark's ownership or your rights regarding it.

· Confirms there's no ongoing legal case involving your trademark, either in the USPTO or any court.

· Finally, sign and date the statement, and verify the accuracy of all the details in it.

5. A Simple Timeline Guide

To make sure your trademark registration remains active, follow these steps:

A. Your Trademark's Early Years: Ages 5-6

• What to do? File a Declaration of Use and/or Excusable Nonuse under Section 8.

• When? Between the 5th and 6th years after the registration date.

· Example: If you received your registration number on January 1, 2020, you would need to file the Section 8 declaration between January 1, 2025, and January 1, 2026.

B. Your Trademark's Pre-Teen Years: Ages 9-10

• What to do? Along with the Declaration of Use and/or Excusable Nonuse, now you also file an Application for Renewal. This involves Sections 8 and 9.

• When? Between the 9th and 10th years after the registration date.

• In Our Example: Continuing from the above, you'd need to file this by January 1, 2029, through January 1, 2030.

C. Your Trademark's Major Milestones: Every Decade Thereafter

• What to do? As before, you'd be filing the Declarations of Use and/or Excusable Nonuse and an Application for Renewal under Sections 8 and 9.

• When? Every 10 years after your last filing.

• In Our Example: Continuing from the above, the next deadlines would be between January 1, 2039, and January 1, 2040, then between January 1, 2049, and January 1, 2050, and so forth.

It's crucial to remember that the USPTO may send courtesy email reminders for upcoming maintenance filing deadlines, but whether you receive a reminder or not, it's essential to realize the responsibility is yours.

6. Grace Period: A Little Extra Time

If you missed your due date, don't panic! The USPTO gives you a six-month "grace period" to submit your declarations or renewal requests. But there's a catch: you'll need to pay an extra fee.

7. Why Bother With All This?

Though the Section 8 Declaration and Section 9 Renewal might seem like mere paperwork, they play a huge role. They ensure your trademark stays legally strong, especially during times when you might not be actively using it. It's about keeping everything up-to-date and guarded from any potential challenges.

In a nutshell, owning a trademark is like having a plant. It's not just about planting it and walking away. You need to check on it, water it, and sometimes tell others it's still alive and growing. If you forget, there's a little window of time to make up for it, but it might cost you. Keep your trademark healthy and active by understanding these processes!

Trademarks? We've Got You Covered!

If any of this feels overwhelming or if you simply have questions, the experts at Sari Law Firm are here to assist you every step of the way. Let's address all your trademark issues.