Maintenance of Trademark/Service Mark Registrations
After the approval of the trademark or service mark, the registration must be maintained by filing renewal documents at certain time periods with the United States Patent and Trademark Office. If not timely filed, it will result in the cancellation of the trademark or service mark registration.
Between the 5th and 6th years after registration of the trademark or service mark, the registrant must file a Declaration of Use and/or Excusable Nonuse under §8 of the Trademark Act. Alternatively, the registrant may file a Combined Declaration of Use and Incontestability under §8 & §15 of the Trademark Act. The Declaration of Incontestability under §15 is a statement by the owner of the trademark or service mark registration claiming incontestable rights and continuous use of the trademark or service mark for five years provided that the following are applicable:
(a) The trademark has been in continuous use in commerce for five years after the date of registration.
(b) There has been no final legal decision adverse to the registrant’s claim of ownership of the trademark or service mark, or to the registrant’s right to register the trademark or to keep the registration.
(c) There is no pending legal proceeding involving the trademark with the United States Patent and Trademark Office or in a court of law.
After the filing of the declaration, the trademark or service mark becomes incontestable whereby certain aspects of the registration can no longer be challenged by third parties.
Thereafter, between the 9th and 10th years after the registration, and each successive 9th and 10th year period thereafter, a Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal under §8 & §9 of the Trademark Act must be filed by the registrant. Failure to do so will result in the cancellation of the trademark registration.