There are Strict Filing Requirements to Maintain Your Trademark Registration

A trademark or service mark is a distinctive sign or indicator used or intended to be used by an individual or entity to identify and distinguish the goods and/or services of one seller or provider from those of others, and to indicate the source of the goods and/or services.

United States Patent and Trademark Office (“USPTO”)

Once a mark is registered with the USPTO, the owner of the mark must file specific documents and pay fees at regular intervals to keep the registration “alive” or valid.  For example, a Declaration of Continued Use (or Excusable Nonuse) under Section 8 of the Trademark Act1 (“§8 Declaration”) is required to be filed between the 5th and 6th years after the date of registration of the mark. The §8 Declaration is a sworn statement by the owner of the mark that either (i) the mark is in use in commerce or (ii) the owner is claiming excusable nonuse of the mark. In addition, the owner of the mark is required to file a §8 Declaration and an Application for Renewal between the 9th and 10th years after the registration date, and between every 9th and 10th year after the registration date thereafter.

California Secretary of State

The duration of a mark registered in California is five (5) years and the renewal application requires submission of one specimen showing actual current use of the mark. An application for renewal must be received by the Secretary of State within (but not before) the six-month period prior to the date of expiration of the current registration together with the renewal fee.

If you would like further information or if you would like assistance in maintaining or renewing your trade or service mark registration, please contact us.