Trademark Portfolio Management and Maintenance

To keep a trademark registration alive, the registration owner must be aware of and diligently file required maintenance documents and United States Patent and Trademark Office (USPTO) fees at regular intervals.  Unfortunately, these critical tasks are often overlooked by trademark registrants.  The failure to file the required maintenance documents and USPTO fees by deadlines will result in cancellation of trademark registration or invalidation of protection.  To make things even more challenging for trademark owners, because trademark registrations are public, trademark registrants are frequent targets of official-looking spam and fraudulent solicitations that ask for money to be paid to keep or renew their trademark registrations.  Through scams like this, trademark registrants stand to lose money and their valuable trademark registrations.

No need to worry – you can throw all of those notices away.  Brand Registry Trademark has you covered for all of your trademark portfolio management, docketing, maintenance, and renewal needs.  We use advanced software docketing systems and frequently reviews files to keep track of your trademark portfolio and valuable intellectual property assets.  We will make sure that your trademark registrations are properly and validly maintained and renewed.

Here are just a few of the common types of trademark portfolio management, maintenance, and renewal tasks that we perform for online sellers:

Declaration of Use and/or Excusable Nonuse of a Mark under Section 8

A Section 8 Affidavit of Use is due for any trademark registration between the fifth- and sixth year following the date of the registration.  Section 8 affidavits must include: (a) a statement of use in commerce as to at least some of the goods or services described in the registration; (b) submission of specimens evidencing the use; and (c) USPTO fees.  If a Section 8 affidavit is not filed for a trademark registration between the fifth and sixth year (or during a six-month grace period for additional cost) the trademark registration is automatically cancelled.

Declaration of Incontestability under Section 15

A Section 15 Declaration of Incontestability is not required in order to maintain or renew a trademark application.  But, it can be filed, with required fees, after five years of registration.  There are important reasons to file a Declaration of Incontestability.  For example, once the declaration is filed and accepted:  (1) the registration becomes conclusive evidence of the registrant’s ownership and exclusive right to use the mark; and (2) the trademark is immune from attack from third parties on the basis of descriptiveness. This is very useful in trademark disputes.  So, it often makes economic sense for trademark registrants to file if they qualify.

Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal under Sections 8 & 9

A Combined Declaration of Use and Application for Renewal is due between the ninth and tenth year following trademark registration, and every ten years thereafter.  Section 8 Declarations of Use are explained above.  Additionally, trademark law requires that a trademark registration be renewed every ten years after the date of registration.  Requirements for Section 9 renewals are like those for Section 8 affidavits in that specimens of current use for each class of goods or services covered by the registration are needed, as well as required fees.

Trademark Audits

Because trademarks, brands, product lines are often dynamic—especially for growing companies—businesses should conduct a trademark audit periodically (at least annually) to make sure that the trademark portfolio is up to date. A trademark audit conducted by an experienced trademark attorney examines the trademark portfolio to make sure it accurately and adequately protects the brand owner’s interests in the U.S. and abroad.  A trademark audit will also help to ensure that trademark rights are maintained by proper trademark use.

Contact Brand Registry Trademark today for help with trademark portfolio management, including trademark maintenance, docketing, and renewals.