After registering a trademark, a presumption arises that you own it, but there are obligations that come with ownership. Those obligations are maintenance and renewal. Below are more particular registration processes for how to maintain an obtained trademark and renew it, as well as what may happen in the event that you allow the 10-year protection period to lapse.
Renewing a Trademark
To maintain a registered trademark, a Section 8 Declaration of Continued Use is required. The declaration is sworn to and states that the trademark has been in continuous use in commerce. The first required filing of a Section 8 Declaration is between the 5th and 6th years after registration date. The second required filing is between the 9th and 10th years after the registration date. When a Section 8 Declaration is accepted, appropriate notice is sent. If refused, an Office Action will be sent stating the reason for refusal along with available remedies, if any. So long as Section 8 declarations are filed every 10 years thereafter, the trademark remains valid forever.
Failure to Renew
Failure to file a timely Section 8 declaration will result in cancellation of the trademark. Nonuse of a trademark for 3 consecutive years has been held to be evidence of abandonment. Once cancelled, a trademark cannot be revived or reinstated. A new application for registration must be filed. There is a 6 month grace period after the 10 year anniversary of registration for filing of the Section 8 declaration. An additional fee must be paid.
Excusable Nonuse
If a claim of excusable nonuse is made by an owner, the owner must then file a Section 8 Declaration of Excusable Nonuse. Among other things, the declaration must state the date when use in commerce of the trademark is expected to resume, the specific reasons for nonuse such as continued research and development, and what specific steps will be taken to resume use of the trademark such as retooling of machines and equipment. A decrease in demand for the product or service does not necessarily show excusable nonuse.
Incontestable Registration
After a trademark has been in continuous use in commerce for 5 years, you can claim your incontestable right in it. An incontestable registration is incontrovertible evidence of a trademark, proper registration of the trademark, your dominion over the trademark, and your sole right to use the trademark in connection with your goods or services. Your Section 15 Declaration for incontestability must state 5 years of continuous use in commerce, that there are no adverse decisions regarding the trademark and there are no pending cases involving any claimed rights of the trademark. Filing of this document is not mandatory and it does not result in any loss of rights but it is recommended because it expands your rights and makes it more difficult to contest the trademark. Oddly enough, an incontestable right is contestable under certain difficult to prove grounds.
Actual renewal of the trademark is done by a combined Section 8 and 9 filing and is routine compared to maintaining the trademark. The application for renewal must be filed between the 9th and 10th years from date of registration. They will only be accepted within 6 months after the due date, otherwise they will be cancelled and a new trademark application will be required.
