traverselegal - March 19, 2012 - Protecting Your Trademark from Infringement, Trademark Law
MARK TRADEMAN, TMIN NEWS ANCHOR:
Congratulations on the registration of your trademark! You’ve probably invested a lot of time and money into getting this registration, so don’t forget to take the actions necessary to protect your valuable asset.
Trademark rights can last forever, but in order to keep your federal trademark registration you must continue to use the mark in commerce and file the required maintenance documents at regular intervals. The first maintenance document must be filed between the 5th and 6th years after registration and the remaining documents must be filed between the 9th and 10th years after registration, and then every 10 years thereafter. We’ll talk more about that in a moment, but be aware: Failure to file these documents will result in the cancellation, or loss, of your federal registration.
Nobody wants that to happen, so keep it right here and we’ll let you know what you need to do to keep your registration alive. To help us along, let’s check in with Grant Gainsworth, our Senior News Analyst, and one of our usual featured guests, Professor Christina Graham-Lawson. Thanks to you both.
GRANT GAINSWORTH, TMIN SENIOR NEWS ANALYST:
Of course.
CHRISTINA GRAHAM-LAWSON, PROFESSOR LAW:
Happy to help!
TRADEMAN:
Grant, you’re the Office expert; let’s start with you. In order to keep their registrations alive, what do our viewers need to do?
GAINSWORTH:
Well, the first thing you need to do is look up the trademark’s Date of Registration. The due dates of your post registration maintenance documents are calculated from that date, so you need to know what it is.
TRADEMAN:
And where do you find that date?
GAINSWORTH:
The easiest place to find it is on your actual registration certificate. Or, if your paper certificate isn’t handy, you can access a digital copy through the USPTO database.
TRADEMAN:
Alright, folks. Feel free to pause this broadcast while you look up your Date of Registration; sounds like you’re going to need it. We’ll wait…
And when you’re ready, I’ll ask the professor for an example of how to calculate when the post registration documents are due. Professor?
GRAHAM-LAWSON:
Let’s say your trademark registered on April 15th, 2010. Add 6 years for the due date of the first maintenance document: April 15th, 2016. Ten years for the second: April 15th, 2020. Then ten years for the third: April 15th, 2030. And so on.
The great part is that you don’t have to wait until the last day of the filing window to submit your forms. In fact, you can file up to 1 year before the documents are due. So, the windows for filing actually look like this.
TRADEMAN:
What happens if you miss your filing deadline?
GRAHAM-LAWSON:
Well, it depends on when you discover that you missed the deadline. If it’s within 6 months of the due date, you can take advantage of the grace period and file your maintenance documents, along with a filing fee and a grace period surcharge.
If you miss both the deadline and the grace period, you’re out of luck. Your registration will expire or be cancelled and there is no opportunity to revive the registration. At that point, you will have to start all over again and file a brand new application.
So, make sure to set a reminder for filing your maintenance documents. To keep your registration alive, you must meet your deadlines. And the Office does not issue reminders about when the documents are due.
TRADEMAN:
Quick follow-up here, because we get this question a lot from our viewers. If your registration expires or is cancelled, does that mean you’ve lost your trademark?
GRAHAM-LAWSON:
Not necessarily. You might still have rights in the mark, but you have lost the powerful nationwide protection that a federal registration creates.
TRADEMAN:
OK; thanks. So, what are these post registration documents that must be filed? Grant?
GAINSWORTH:
The document due between the 5th and 6th year after registration is the Section 8 declaration. This is a sworn statement that you are continuing to use the mark in commerce for each good or service listed in the registration, and it must include a specimen of use and a filing fee.
TRADEMAN:
Now, what do you do if you are not using the mark for each and every good or service listed in the registration?
GAINSWORTH:
If you are not using the mark for specific goods and services, you must delete those items from the registration. The only exception is if special circumstances exist that excuse your non-use of the mark. It is not always easy to make that claim, however, as you must provide both evidence and an explanation to support the excusable non-use claim.
TRADEMAN:
OK. And to clarify, when you say “specimen,” is that the same type of specimen that’s required during the application process?
GAINSWORTH:
It is. The same concepts apply here: a “specimen” shows how you use your mark in commerce. It could be a label, a tag, or a container if you registered your mark for goods or an advertisement if you registered your mark for services.
TRADEMAN:
Alright. And, remember, folks, if you need more information about specimens or just want a refresher, be sure to watch the specimens news broadcast which provides examples and explanations of acceptable submissions.
Now, Grant, what about the second document that’s due?
GAINSWORTH:
The document due every ten years after registration is the Combined Sections 8 & 9. As you might guess, the filing includes the Section 8 declaration and, in addition, a Section 9 request for renewal of the registration. The Section 9 filing calls for a signed request for renewal and a filing fee.
TRADEMAN:
And those are mandatory filings, correct?
GAINSWORTH:
Correct. Failure to file the Section 8 declaration when it is due and the Combined Sections 8 and 9 form when it is due will result in the cancellation of your registration.
TRADEMAN:
Important to keep in mind. Now, Professor, I understand there is an optional, but highly beneficial, form that applicants can file. Can you tell us a little about it?
GRAHAM-LAWSON:
Certainly, Mark. The Trademark Act allows for registered trademarks to become “incontestable” by filing a Declaration of Incontestability.
TRADEMAN:
And what exactly does that mean?
GRAHAM-LAWSON:
Well, essentially, an incontestable trademark registration is one that has an extra layer of protection against challenges. Once a registration becomes incontestable, another party cannot challenge the ownership of the mark or argue that the mark should not have been registered. There are exceptions, of course, such as registrations obtained fraudulently or marks that have been abandoned, but overall, it means your trademark is very well protected.
TRADEMAN:
Sounds like a good way to reinforce your rights.
GRAHAM-LAWSON:
It is. And that’s why so many trademark owners claim incontestability for their marks. It limits the types of challenges that may be made against a registration, reducing the likelihood of the loss of that registration.
TRADEMAN:
OK, so what do viewers need to do to claim incontestability for their marks?
GRAHAM-LAWSON:
Like most legal filings, there are several criteria that must be met. The mark must be registered on the Principal Register, it must have been in continuous use in commerce for a period of 5 years after the date of registration, and there may not be any adverse decisions or pending proceedings involving rights in the mark.
TRADEMAN:
Now you said incontestability is only available for marks on the Principal Register. Does that mean marks on the Supplemental Register are not eligible?
GRAHAM-LAWSON:
That’s correct.
TRADEMAN:
And if some of our viewers don’t remember the Register on which their marks are registered, is there a place they can look up that information? Is that also on the Registration Certificate?
GRAHAM-LAWSON:
It is. In addition to showing the Date of Registration, the Registration Certificate indicates whether the mark is on the Principal or the Supplemental Register.
TRADEMAN:
OK; great. So, that’s the basic rundown of the required and optional post-registration documents: Sections 8 and 9 are required; Section 15 is optional.
Now that we have an understanding of what the documents are, we need to know how to file them. For that, we turn to our Investigative Reporter, Sandhya Mahajan, who has some breaking news about a common mistake to avoid. Sandhya?
SANDHYA MAHAJAN, TMIN INVESTIGATIVE REPORTER:
If you’ve gotten this far in the registration process, you’ve probably encountered the Trademark Electronic Application System, or, as it’s more commonly known, TEAS. T-E-A-S. TEAS is the electronic filing system that allows trademark applicants and registrants to file their paperwork over the Internet. It’s all available through the USPTO.GOV website.
And, according to my sources here at the Office, TEAS is the best way to file your post-registration documents. If you could put it up on the screen there…
You can see the Combined Sections 8 and 15 form, the Combined Sections 8 and 9 form, plus the individual Section 8 and Section 15 forms, if you need to file them separately. All the relevant forms are right there in one place.
TRADEMAN:
Excellent. And what about the common mistake that registrants can avoid?
MAHAJAN:
Right. I spoke with several senior officials here and they indicated that one of the biggest mistakes made by registrants is a failure to update their Ownership information. And, before I tell you how to update your information, let me tell you why it’s important:
Section 8 and Section 9 documents must be filed by the current owner. If the documents are not filed by the proper owner, the documents may be refused and the registration could be cancelled. So it is imperative that you keep your information up to date.
When you open one of the registration maintenance document forms in TEAS, you’ll see that the Owner of the Mark field is automatically filled in with the most recent Owner of the Mark information found in the USPTO database.
Double check that field and make sure that the Owner of the Mark information is accurate. If what’s listed is not correct, read and carefully follow the instructions provided on the form.
Typically, old or outdated information in the USPTO database is caused by a registrant failing to notify the Office of a change in ownership of a trademark. It may be because the business changed its name, was sold, or for some other reason. You can fix the discrepancy by filing an assignment or a “change of name” document through the USPTO’s Assignment Division. The form for doing so is also available on the USPTO website.
TRADEMAN:
OK. Good to know. Thanks, Sandhya.
MAHAJAN:
Sure thing, Mark.
TRADEMAN:
So, remember, use the TEAS forms on the USPTO.GOV website to file your post-registration documents electronically and, before you submit them, make sure that the Ownership information correctly reflects the current owner of the mark. Otherwise, your registration could be cancelled.
In addition, make sure all the other information in your filing is accurate. For example, if goods or services currently identified in the registration are not in use, they should be deleted from the registration when you submit your filings. Otherwise, someone could challenge your registration because it contains goods and services that are not in use.
Grant? Christina? Anything else you’d like to add in our remaining minutes?
GAINSWORTH:
I’d like to tack on to what Sandhya said and remind people that, in addition to your Ownership information, you should also keep your Correspondence information up to date. That way, the Office can contact you, if needed.
GRAHAM-LAWSON:
And I’d recommend contacting TAC if you have any questions.
TRADEMAN:
TAC. That’s the Trademark Assistance Center, correct?
GRAHAM-LAWSON:
Correct. They can’t provide legal advice, but they can answer general questions about the trademark process and give guidance on the type of information to include in a form.
TRADEMAN:
Anything else?
GRAHAM-LAWSON:
I’d say, while you have your registration certificate handy, jot down when your filings are due on a calendar. Set an electronic reminder. Or post the due dates in a place where you’ll see them. A lot can happen over 6 to 10 years; it’s easy to forget.
GAINSWORTH:
And remember, if you to fail to file the required maintenance documents, your registration will be cancelled. After the grace period provided by law, there is no additional time for late filing. And, unlike an abandoned application, you cannot revive your registration. Unfortunately, your registration will be dead and you’ll have to begin the application process all over again.
TRADEMAN:
Serious stuff. Thanks to you both.
GAINSWORTH:
Sure.
GRAHAM-LAWSON:
Thank you.
TRADEMAN:
You worked hard to get your registration, so work hard to keep it alive. The Office will not be sending you reminder notices, so be sure to set that reminder now to file these maintenance documents later. The continued life of your registration depends on it.
And, as always, feel free to replay this broadcast at any time and check back on USPTO.GOV for more information.
For Sandhya Mahajan, Grant Gainsworth, and Professor Christina Graham-Lawson, I’m Mark Trademan, Trademark Information Network.
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