Trademark owners must maintain their registrations through periodic filings and renewals. These requirements include submitting declarations of use, optional incontestability claims, and renewal applications at specific intervals after registration.

Failing to meet maintenance deadlines can result in cancellation, loss of legal protections, and increased vulnerability to challenges. Ongoing responsibilities include monitoring for infringement, enforcing proper usage, and preventing genericide to preserve trademark rights.

Post-Registration Maintenance Requirements

Requirements for trademark maintenance

• Section 8 Declaration of Use filed between 5th and 6th year after registration proves continued use of mark in commerce with specimen showing current use (product packaging, advertisements)
• Section 15 Declaration of Incontestability optionally filed after 5 consecutive years of continuous use provides additional legal protections against certain challenges
• Combined Section 8 and 15 Declaration streamlines process saving time and costs for trademark owners
• Section 8 and 9 Combined Declaration and Application for Renewal filed between 9th and 10th year after registration includes proof of use and request for 10-year renewal period

Deadlines for trademark documents

• Section 8 Declaration due between 5th and 6th year after registration date with 6-month grace period available for additional fee
• Section 15 Declaration filed any time after 5 years of continuous use without strict deadline
• First Renewal (Section 8 and 9) due between 9th and 10th year after registration date with 6-month grace period for additional fee
• Subsequent Renewals required every 10 years after first renewal with 6-month grace period available for late filings

Consequences and Ongoing Responsibilities

Consequences of registration lapse

• Cancellation of registration removes mark from federal register eliminating nationwide constructive notice
• Forfeiture of incontestable status weakens legal protection against certain challenges
• Prohibition on using ® symbol reduces visual indication of federal registration
• Increased vulnerability to infringement claims and difficulty enforcing rights internationally
• Costly and time-consuming process to re-register the mark if protection lapses

Monitoring to prevent genericide

• Active trademark monitoring watches for unauthorized use by competitors (counterfeit products) and similar marks in marketplace
• Enforcement actions include cease and desist letters and infringement lawsuits to protect rights
• Proper trademark usage guidelines educate stakeholders on correct usage as adjective not noun or verb (Kleenex tissues not Kleenex)
• Quality control maintains consistent product/service quality and careful licensing with standards
• Documented continued use and strength of mark tracks marketing efforts and consumer recognition
• Prevent genericide by avoiding mark becoming generic term for product/service (escalator, thermos)