We assist clients with trademark maintenance in a number of ways. It’s important that trademark holders use their marks to avoid inadvertent abandonment through improper use or otherwise. We also help clients with registered marks by tracking the progress of their marks on our trademark docketing system. This allows us to notify the owner of various post-registration requirements that must be met to avoid a loss of rights.
Affidavit of Use and Incontestability.
Between the fifth and sixth anniversary of a mark’s registration date, the owner must file an affidavit or declaration stating that the mark is still in use and evidencing the same. We will notify the client when an Affidavit of Use is needed and prepare the appropriate papers. The Trademark Office does not make notifications. After such papers are signed, we file them, along with appropriate specimens of use, with the Trademark Office. U.S. federal law also allows the owner of a registered mark to establish the “incontestability” of a registration by filing an appropriate affidavit or declaration. This filing may be made after any five year period of continuous use.
Once this filing is made and the mark is “incontestable,” the registration is conclusive evidence that the registrant owns the mark, has properly registered the mark, and has exclusive rights to use the mark in commerce in connection with the goods or services identified in the registration (subject, in each case, to certain exceptions). Through our database/docketing services, we will inform the client when such a filing is possible. We draft the affidavit with the appropriate information, and file it with the Trademark Office.
Renewal of Registration.
Registrations must now be renewed every ten years by filing a renewal application along with relevant specimens of use. We will notify the client when a renewal is needed and draft and file the appropriate application.
If you are a trademark holder interested in a maintenance strategy, we would be happy to assist you. Contact us here to set up a specialized consultation today.