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