Although a trademark can theoretically last forever so long as it is being used in commerce in connection with the advertising and sale of products or services, a United States trademark registration must be maintained and renewed periodically in order keep it in full force and effect. The good news is that preventing your trademark registration from lapsing is not a very difficult or time-consuming thing to do. The bad news is that you have to actually remember to do it.
Between the fifth and the sixth year of registration, you must file what is called the Section 8 Declaration of Continued Use. The form is provided by the Trademark Office online and may be completed and submitted electronically. In addition to paying the filing fee and providing a sworn statement that the trademark is still in use in commerce, you must also include a specimen showing actual use of the trademark. If you fail to timely file the Section 8 Declaration of Continued Use by the sixth year of registration, your United States trademark registration will be canceled and you will lose all of the benefits and protections of federal registration. Having said that, there is a six month grace period in which you can still file the Declaration of Continued Use, but the cost of filing it increases quite substantially.
If you remembered to file the Section 8 Declaration of Continued Use, the next step will be to renew your United States trademark registration between the ninth and tenth year of registration. This requires that you file and pay for a Section 8 Declaration of Continued Use and a Section 9 Application for Renewal (which are provided by the Trademark Office as a combined form). You must also include a current specimen showing actual use of the trademark as you did when you filed the Declaration of Continued Use between the fifth and sixth year of registration. In the unfortunate event that you forget to file the renewal documents by the tenth year of registration, the Trademark Office will cancel your registration unless you file the required documents within the six month grace period and pay the increased filing fee.
Assuming you timely filed all of the proper documents during the first ten years of registration, you are not required to do anything else to keep your trademark registration active until the 19th year of registration. At that time, you will again have to file a Section 8 Declaration of Continued Use and a Section 9 Application for Renewal in order to keep your trademark registration alive. If these documents are not filed by the 20th year of registration (or within the six month grace period), your registration will be canceled. Your trademark registration will then have to be renewed again between the 29th and 30th year of registration, the 39th and 40th year of registration, and so on.
Finally, it is absolutely essential that all of these documents be prepared correctly so as to ensure that the validity of your trademark registration is not jeopardized by mistakes or errors you may inadvertently make in the completion of the required forms.
If you have any questions about how to keep your United States trademark registration from being canceled, or need some assistance with preparing and submitting the proper registration maintenance documents, please do not hesitate to give me a call. I look forward to hearing from you soon.