garbis law, llc

A declaration of continued use or excusable nonuse must be filed between the fifth and sixth anniversary from the registration date. This declaration includes a statement that the mark is in use in commerce, along with a list of the goods and/or services for which the mark is being used for. At this time, you can also delete specific goods and/or services if they are no longer in use. 

Along with the Declaration of Continued Use filed between years 5 and 6 of your registration, a Declaration of Incontestability may also be filed if the mark has been in continuous use in commerce for a period of five years after date of registration.

Once the registered mark has become incontestable, the registration shall be conclusive evidence of:

• the validity of the mark;
• the registration of the mark;
• the registrant’s ownership of the mark
• the registrant’s exclusive right to use the mark in commerce.

The next milestone when it comes to maintaining a registered trademark comes between years 9 and 10 after registration. At that time, an additional Declaration of Continued Use or Excusable Nonuse must be filed, along with  an Application for Renewal. 

The term of a trademark registration is 10 years. With that said, an Application for Renewal must be filed between the ninth and tenth anniversaries, and during the last year of each successive ten year period.

Yes. Under the USPTO’s “Proof of Use Audit Program,” the USPTO may randomly select registrations that meet the following requirements to check if the registrant is indeed using all of the goods and/or services listed in the registration:

1. A Section 8 or 71 declaration of use has been filed;
2. The registration includes at least one class with four or more goods or servcies; OR
3. The registration includes at least two classes with two or more goods or services in at least two classes.

If your registration has been selected for an audit, you will receive an office action requesting you to submit proof of use for each identified good or service.

Typically, in order for the nonuse of a mark to be excused for specified goods and/or services:

• The nonuse must be temporary.
• The nonuse must be due to special circumstances and not due to any intention to abandon the mark.
• The registration owner must show (i) how the circumstances prevent use in commerce; and (ii) what efforts are being made to resume use.

If you do not submit the proper renewal documentation between the 5th/6th and 9th/10th anniversaries, a 6 month renewal grace period also applies. You may still submit the renewal documentation during this six month grace period, along with additional fees due to the USPTO.

If you fail to file necessary maintenance and renewal documents, your registration will be canceled.

Between years 5 & 6, the USPTO filing fee is $225 per class of goods/services for the Declaration of Continued Use or Excusable Nonuse plus $200 per class of goods/services for the Declaration of Incontestability. Filing during the grace period adds $100 per class for each declaration.

Between years 9 & 10, and for each subsequent renewal every ten years, the current USPTO filing fees are $525 per class of goods/services when filing a combined Declaration of Use and Renewal Application. If you are filing during the grace period an additional $100 per class of goods/service will be charged for each Declaration or Renewal Application filed.