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Articles - Maintaining a Trademark Registration


From: Gregg R. Zegarelli, Esq.
Subject: Trademark Maintenance

QUESTION:

I have a United States Trademark Registration, now what?

ANSWER:

If you are a client of the firm, then we assist you in tracking your deadlines with our proprietary automated Mindsaver technology.  

That said, generally after 1988, trademark registrations are effective for 10 years.  You need to renew the registration between the 9th and 10th year following the initial registration and each term thereafter.  You can keep renewing a trademark registration forever, provided that you continue to use the trademark and comply with the filing/payment/use requirements.

There is one twist: you must file an Affidavit of Continued Use (aka "Section 8 Affidavit") between the 5th and 6th year following the date of the registration.  This is the government's way to "weed out" trademark registrations.  The filing fee is $100 per class.  If you do not file the Affidavit, the mark registration will be abandoned.  Yes, the 10 year registration is ended after 6 years if no maintenance filing is made.

There is also an optional filing that our firm generally recommends to our clients.  This is an Affidavit of Incontestability (aka "Section 15 Affidavit").  After a registration is 5 years old, you have the option to have the mark declared "incontestable"; this does not really mean that it can never be contested, but that the challenger is prevented from making certain arguments to challenge the mark.  This makes the mark registration much more difficult to contest.  The filing fee is $200 per class.  Therefore, the effective cost of maintaining a trademark at the fifth year is either $100 per class or $300 per class, depending upon whether the mark is worth requesting "incontestability" to you.  Thus, for the three-class registration, the maintenance cost at the 5th year may be between $300 and $900, depending upon whether incontestability is claimed for one

After filing the Affidavit, you will still need to file the renewal at the end of the initial 10 year period.  The filing fee is currently $400 per class.  Plus, there is a $100 affidavit fee.  Thus, effectively, the filing fees are $500 per class to renew a registered trademark.  As a result of the two required filings, the fees to maintain a trademark registration during the first 10 years is more expensive than afterwards.

In addition to the payment requirements, you must still be using the mark in commerce on the goods identified in the registration.  You need to submit specimens of that use.  Because of online filings, the firm almost universally submits .jpg picture files showing the mark as used on the goods in interstate commerce.  See our publication on specimens for more information.

We commonly assist our clients with their mark registration and maintenance strategy.  For more information, contact us at info@zegarelli.com
 



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Articles and information are for general information only, and often address issues, without expressly indicating, in generalizations. Laws vary between and among jurisdictions.  You should not rely upon any information provided by or on the website, including articles, as applicable to your particular situation. The law, filing fees, etc., change often, so the information in this document may not be current. The laws of various jurisdictions may be different than provided here.  Please contact us at info@zegarelli.com if you are interested in becoming our client--only then would this office be in the position to provide advise with regard to your particular situation.  It is important for you to review Terms of Use.

Unless otherwise specified above, Copyright © 2004,2008 Technology & Entrepreneurial Law Group, PC. All rights reserved.


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