Phoenix Trademark Renewal

If the appropriate renewal documents are not filed in a timely fashion, or if your trademark isn’t used commercially for three consecutive years, your trademark will be cancelled by the USPTO. If you don’t uphold these requirements, you could lose the rights to your trademark, including legal remedies if a third party commits trademark infringement.

If your trademark is canceled, it cannot be reinstated, and you need to apply for registration again. The USPTO offers a 6-month grace period to renew the registration, but petitioners need to pay an additional fee.

It is your duty to police and defend your trademark as long as you are the owner of the registration. That means that you need to challenge any person or company trying to file a trademark that could be overlapping your registration, and constantly check for infringement.

TO MAINTAIN YOUR TRADEMARK REGISTRATION, YOU MUST:

1. Continue to use your trademark in interstate commerce.
2. File your registration maintenance documents with the USPTO, and pay the required fees, at the required times.
3. Keep your correspondence information updated.

A Declaration of Use. This is also known as Section 8 Affidavit, and it confirms that the owner is still using the trademark as it was originally issued.

Your first Section 8 renewal must be submitted between the five and six years after registration. This timeline starts from the moment of actual registration rather than your application date. If you fail to meet this deadline, you have a six-month grace period in which you can still file but there will be an additional fee.

A Declaration of Incontestability. Also known as Section 15 Affidavit, it states that your trademark cannot be challenged. While this is not mandatory, it provides further protection in case of future challenges or infringement.

At this point, if possible, you should also file a Section 15 to make the trademark incontestable. This will ensure your trademark cannot be challenged unless it becomes generic, falls into nonuse, or was obtained through fraudulent means. Incontestability requires that the following requirements be met:

• Trademark must be registered on the Principal Register.
• Continuous use in commerce for at least five years.
• No adverse or pending legal proceedings involving trademark rights.

An Application for Renewal. Also known as Section 9 Affidavit, it should be filed between the 9th and 10th year of your trademark registration date. This also has a six-month grace period but with additional fees.  Another Section 8 declaration is due at this time. From that point on, you’ll need to submit a combined Declaration of Use and Application for Renewal every ten years after registration.

Section 9 Affidavit should be filed in the same manner for every future registration period, and it will grant trademark protection for an unlimited period (as long as you file the paperwork and have been using the trademark as it was issued).