Beware of Key USPTO Deadlines after Trademark Registration

You applied for trademark registration from the United States Patent and Trademark Office (USPTO) and, after many months and maybe an Office Action letter or two, you have finally received your fancy Certificate of Registration in the mail. Nothing more left to do but enjoy the spoils of your trademark rights under the Lanham Act, right?

Not exactly. Even though you’ve been granted registration, there are still some critical dates and tasks which, given their length of time away, can be easy to overlook, possibly jeopardizing your registration as well as rights in your mark.

For those with a newly granted Sec. 1(a) “use in commerce” registration on the Principal Register, the following chart explains the critical filing periods during which a mark owner must file certain documentation in order to maintain your registration:

 When DueWhat to FileForm to UseFiling Fee
1st Filing DeadlineBetween the 5th and 6th year after your Registration DateDeclaration of Use of Mark in Commerce Section 8 Form$125 per Class
2nd Filing DeadlineBetween the 9th and 10th years after Registration DateCombined Declaration of Use and Application for RenewalSection 8 and 9 Form$425 per Class
Ongoing Filing Requirements (after 2nd Filing Deadline above)Successive 10 year periods after your Registration Date (after 2nd Filing above)Combined Declaration of Use and Application for RenewalSection 8 and 9 Form$425 per Class

Again, this post is strictly addressing brand new Sec. 1(a) “in-use” registrations. Registrations approved in other bases will have different critical dates you need to be aware of. I hope to cover cover them in a different post.

The point is, if you’re a new registrant, it’s highly recommended that you dust off your favorite multi year calendar or, better yet, calendaring website or app and enter in the critical timeframes above, with lots and lots of advance reminders.

Deadlines that seem like a long way away are often there before you know it. If you’re not the calendaring type, we recommend hiring a trademark research company or agency to handle the critical dates for you. Particularly if your brand is one that is or might be prone to lots of competition or confusing similarity, these companies can also help monitor your mark and alert you to conflicting if not outright infringing usage.

BHANDLAW assists trademark owners looking to file their Declarations of Use or Applications for Renewal with the USPTO. For more information, or to discuss your specific trademark issue, feel free to contact us at the phone number or e-mail address below or use the contact form to the right.

Image courtesy of Nick Youngson CC BY-SA 3.0 Alpha Stock Images

Ben Bhandhusavee is the Managing Attorney for BHANDLAW, PLLC, a Phoenix business and technology law firm working with start-up companies, creative intellectual property, Internet and digital media matters, and complex corporate M&A and technology transactions.  Ben can be reached at (602) 222-5542 or by e-mail at bbhand@bhandlaw.com