How to Keep Your Trademarks in Compliance with the USPTO

Going about securing federal protection for your company’s trademarks means you have a fair amount of work to do up front. The application with the U.S. Patent and Trademark Office (USPTO) is fairly in-depth, which means it would be wise to have an attorney help you. Even after you submit a trademark application and it is approved, though, you have to take certain actions to maintain your federal registration. 

Declaration of Use and Application for Renewal

To avoid having your trademarks disappear, you need to remember a few key time windows: 5-6 and 9-10 years after your registration date. These denote the first filings you must submit after your successful application. Five to six years after your registration date, you must file the Declaration of Use and/or Excusable Nonuse with the USPTO. This simply affirms that you have been using your trademarks in connection with the products you registered. If you have not been using your trademarks, though, you may explain why in your filing. For instance, the pandemic might have put your products on hold. 

Between nine and 10 years after your registration date is when you need to file your first full renewal. This includes the Declaration of Use and/or Excusable Nonuse and Application for Renewal. This is a combined filing often referred to as a “Section 8 and 9 filing.” The USPTO might send you an email reminder of these dates, but it is ultimately up to you to submit the required filings. You might be able to file within six months after the deadline for an extra fee. 

Keep Watch Over Potential Imitators

If you have already submitted a trademark application with the USPTO, then you understand how closely examiners will scrutinize your proposed marks for likelihood of confusion and other reasons for rejection. You can generally expect the same level of scrutiny for other applications, but it is ultimately up to you to take actions against other marks that infringe upon yours. 

A good idea is to keep track of pending marks and object when you spot one that you feel would create a likelihood of confusion. It’s also worthwhile to scour the internet for unregistered marks that you feel infringe upon your registered marks. 

We Can Help Protect Your Brand
Getting federal protection for your trademarks is an up-front expense that will pay dividends for your company later on. This is especially important for business owners who eventually want to expand their companies across the country. Our legal team would be glad to sit down with you and figure out the best way to secure your business and, just as importantly, protect your brand. We look forward to speaking with you at your consultation.