Posts Tagged ‘incontestable rights’

How long does Federal Trademark Registration last? How do I maintain my Registration?

Friday, January 3rd, 2020

An owner’s federal trademark registration rights can last indefinitely as long as he/she has properly registered the mark and continues to use the mark in commerce in connection with the listed goods and services and stays on a strict post-registration maintenance schedule. To maintain a trademark registration,  an owner must file a Declaration of Use and/or Excusable Nonuse of Mark under §8 of the Trademark Act along with a specimen evidencing the use. This must be filed on a date that falls on or between the fifth and sixth anniversaries of registration (or for an extra fee of $100 per class,  it can be filed within the six-month grace period following the sixth anniversary).

The owner must file a §8 Declaration of Use with a supporting specimen and an Application for Renewal under §9 of the Trademark Act, on a date that falls on or between the ninth and tenth anniversaries of registration (or for an extra fee of $100 per class, it can be filed within the six-month grace period following the registration expiration date). Following the tenth anniversary of the mark, the owner must file a §8 and §9 within the 12-month period proceeding every 10-year anniversary thereafter.

Failure to file each of the three components in a timely manner (including the six-month grace period) will result in a cancellation of the mark; once a mark is canceled, it cannot be revived or reinstated. If the owner wishes to reinstate the mark, he/she must file a brand-new trademark application.

In addition to filing a §8 between the fifth and sixth anniversary of registration, an owner may choose to file a §15 Declaration of Incontestability, which is not required but gives the owner the benefits of incontestability. The §15 Declaration serves as conclusive evidence of the validity of the registered mark, of the registration of the mark,  of the owner’s ownership of the mark and the owner’s exclusive rights to use the mark with the goods or services, as stated by the USPTO.

The §15 Declaration of Incontestability may be filed at any time after the fifth year of registration so long as: No final legal decision has been issued against the mark, there is no challenge to the mark pending and the mark has not become generic.

Since the date to file the §8 and the first availability to file the §15 coincide, they may be filed together. The §15 affidavit gives a registrant the status of incontestability. Once incontestable, a registration can only be challenged for invalidity based on limited grounds: (1) the registration or the incontestable right to use the mark was obtained by fraud, (2) the registrant abandoned the mark, (3) the mark is used to misrepresent the source of its goods or services, (4) the infringing mark is an individual’s name used in his/her own business, or is otherwise prohibited or reserved under the Lanham Act, (5) the infringing mark was used in commerce first – prior to the incontestable mark’s registration,  (6) the infringing mark was registered first,  (7) the mark is being used to violate the antitrust laws of the United States, (8) the mark lacks the strength or scope of protection necessary to avoid a likelihood of confusion, (9) the mark is functional in nature or (10) any equitable principles apply, including acquiescence, estoppel or laches. Throughout the life of a registration, the owner must continue to enforce his/her registration rights.

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