Keep your Federal Trademark Protection Intact

Guest post by Erin Bonahoom, founder and attorney at Canvas Legal PLC

If you’ve obtained a federal trademark registration with the United States Patent and Trademark Office (USPTO), you have to take certain steps to maintain the registration. You may also want to take advantage of an opportunity to file additional documents with the USPTO in order to strengthen the protection afforded to your federally registered trademark.

Specifically, five (5) years after your Registration Date (the date that your federal trademark was officially registered), you must file a Section 8 Affidavit with the USPTO stating that you have continuously used the Registered Mark since the Registration Date.

2000px-RegisteredTM.svgThe Section 8 Affidavit must be filed with the USPTO after the 5th anniversary of your Registration Date, but before the 6th anniversary of your Registration Date. Failing to timely file the Section 8 Affidavit within this time frame can result in additional filing fees and ultimately, the loss of your federal registration.

Likewise, ten (10) years after your Registration Date, you must file a combined Section 8 and 9 Affidavit of Continued Use and Application for Renewal to maintain your federal registration beyond that 10th anniversary.

Because of the importance of the time frames, it is highly recommended that you calendar these dates (the 5th anniversary of your registration and the 10th anniversary of your registration) so you can timely file the Affidavits and the Declaration with the USPTO.

Not sure what your Registration Date is?

You can confirm your Registration Date here so that you can make sure to calendar these dates:

https://www.uspto.gov/trademarks-application-process/search-trademark-database

Optional Filing to Strengthen the Protection Afforded to Your Registration

When you file your Section 8 Affidavit, it is highly recommended that you also file a Section 15 Declaration of Incontestability. A Declaration of Incontestability confirms that the owner of the Registered Mark has continued to use the Registered Mark for five (5) years and that it has the right to the exclusive use of the Registered Mark. This Declaration creates a presumption that the Registered Mark is valid and cannot be invalidated or contested. This presumption strengthens the Owner’s ability to enforce and defend the Registration.

For more information, you can check out the USPTO website re maintenance of your trademark registration:

https://www.uspto.gov/trademarks-application-process/filing-online/registration-maintenancerenewalcorrection-forms

 

Erin Bonahoom

Attorney Erin Bonahoom is founder at Canvas Legal PLC. a Detroit-based firm that specializes in small businesses and non-profits. Erin is an instructor of small business courses, and she  frequently partners with local organizations to provide free or low-cost legal seminars.

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