Use it, don’t lose it!

Once a US trade mark is registered, rights owners of the US TM registration have to prove they are actively using the mark after registration by filing what is known as a Section 8: Declaration of Use and/or Excusable Non-use document with the US Patent and Trade Mark Office (US PTO) at the appropriate time.

The purpose of this principal is to avoid the US Trade Marks Register becoming saturated with marks that owners have stopped using, or have no intention of using, and these dormant marks could restrict legitimate competition.

Failure by rights holders to prove they are actively using their marks during the registration period could result in the mark being cancelled.  Thus, the rights holder would have to reapply for the mark and risk facing opposition from another company or third parties who have obtained a similar mark in the meantime.

Relevant maintenance documents and when to file

Section 8 Declaration of Use and/or Excusable Non-Use:

Between the fifth and sixth year following registration of the mark, and the tenth and every ten years thereafter, the Section 8 Declaration must be filed.

A grace period of 6 months following the deadline is available with payment of additional fees.

The declaration must include a sworn statement that the trade mark is still in use and be signed by the rights owner (or an authorised representative/US trade mark attorney). Specimens of use for the mark in all classes covered by the registration must accompany the declaration, together with a list of the goods and services on which the mark is still in use.  Those goods and services that are no longer in use must be deleted from the registration.

If the specimens provided are not acceptable, the Declaration of Use will be rejected.

For this reason, it is imperative that evidence of use is gathered continually throughout the life of the US trade mark registration by keeping detailed records of trade marks in use in the US.  Suitable evidence should include relevant dates, locations, invoices, advertisements, packaging and/or links to websites where the mark is in use.

The USPTO undertakes audits regularly of Declaration of Use filings to make sure the mark is genuinely being use in all classes covered by the registration and it is therefore important to have the evidence readily available.

Excusable Non-Use:

An Excusable Non-Use declaration should include the date of last use and the approximate date when use is expected to restart, together with a list of goods and services for which the mark is not in use, detailed reasons for non-use and steps that are being taken to resume use.

Examples that might be considered as excusable non-use are events such as natural disasters, import/export embargoes or medical emergencies of key personnel.

Declaration of Use (Section 8) and Section 15 Claim of Non-contestability:

It is recommended that rights owners file a Section 15 Claim of Non-contestability with the Section 8 Declaration of Use as it adds an extra layer of protection at the USPTO.

It consists of a statement that no legal decisions adverse to the owners claim of ownership have been made of the trade mark or to the owners right to register and maintain the mark. Confirmation that no pending legal proceedings at the US PTO or any other court must also be made.

Once a Claim of Non-Contestability has been filed and accepted by the USPTO, the mark cannot be contested by another entity at a future date, making this a useful tactic.

Section 9 Trade Mark Renewal:

Section 9 Trade Mark Renewal is filed every 10 years.  It corresponds with the second filing of the Section 8 Declaration of Use and it protects against cancellation of the trade mark.  If the renewal is not filed before the deadline or within the 6 month grace period, the US trade mark will be abandoned.

Section 71 Declaration of Use for Filings under the Madrid Protocol:

To maintain a registered extension of protection in the US under a Madrid Protocol registration, a Section 71 Declaration of Use must be filed between the fifth and sixth year following the grant of the extension of protection.  It must then be filed every ten years thereafter to maintain the extension of protection.  A grace period of 6 months following the deadline is available with payment of additional fees.

Working with a Trade Mark attorney to maintain your registration

Maintaining a US registration is complex and retaining ownership of the mark depends on timely and accurate filings.  At Bailey Walsh, we make sure our clients have all the relevant dates diarised and offer help and advice on appropriate evidence of use that should be gathered throughout the life of the US trade mark, for submission to the USPTO at the appropriate time.

We also have the benefit of long standing relationships with expert trade mark attorneys in the US and if you are considering filing a US trade mark application, or if you already have a registration you would like us to take onto our records, please contact one of our qualified attorneys.