Vital Trademark Steps After Registration

Vital Trademark Steps After Registration

Think your trademark protection lasts forever?  Think again! Successfully registering your mark isn’t the only thing you have to do to protect your mark.

A vital step in the trademark process is between the fifth and sixth year following registration. You must file affidavits showing that you are still using the marks in commerce or the registration will be canceled! Once canceled, others can file and take your rights. Additionally, the mark must be renewed at the end of ten years.

Sometime between the 5th and the 6th year after successful registration of a mark, the owner must file a Declaration of Use or Excusable Nonuse and a fee in order to keep the mark alive.1  Failure to file one of these will result in cancellation of the mark’s registration.2 Furthermore, after five years of continuous use from the date of registration, an owner of a mark may file a Declaration of Incontestability, which makes the mark immune from challenges.3 A Declaration of Incontestability and a Declaration of Use may be filed in conjunction.4

In addition, between the 9th and 10th year after registration, and every 10 years thereafter, the owner must renew the mark by filing a Combined Declaration of Use or Excusable Nonuse, an Application for Renewal, and a fee.5 Failure to file one of these will result in cancellation and/or expiration of the registration.6

A great example of the importance of trademark maintenance involves the use of CINDERELLA on peanut butter. It had been in use by the applicant since 1885, but the registration was allowed to lapse in 2001. The company re-filed to obtain the trademark only to be shot down and told they could not have the registration.7 The new application was denied on the grounds that it would be confused with a Disney registration for candy, chocolate, pretzels, and bread, which was filed in 1998 and allowed in 2005.8 The Cinderella Peanut Butter mark abandoned while Disney’s Cinderella mark was being prosecuted, thereby, allowing Disney to get its mark through the office without the peanut butter mark stopping it. This is a great example of how not paying attention, and/or not engaging trusted counsel as part of your team can result in a loss of rights.

ARC IP Law has years of experience filing and up keeping trademarks, so clients do not have to worry about their mark being cancelled or expiring.

Danna Cotman is the founder of ARC IP Law and has years of experience registering, enforcing, and protecting trademarks.