At Ortynska Law, we guide businesses through every stage of trademark protection—starting from registration and continuing through proper maintenance to ensure lasting legal benefits.
Registering a trademark is an important step in protecting your brand. However, your responsibilities as a trademark owner do not end with registration. There are a number of procedures, each with its own deadline, that need to be followed to ensure that your trademark remains valid and that the registration produces the desired result.
It is essential to file a Declaration of Use (Section 8) between the 5th and 6th year from the date of registration of your trademark, as without doing so, the use of the trademark will not be confirmed, resulting in cancellation of your trademark. This declaration confirms you are actively using the trademark in commerce. If the deadline is missed and you do not file a Declaration of Use on time, there is an additional 6-month grace period for which you will have to pay a separate fee.
Another required filing is the Declaration of Use and Application for Renewal (Combined Sections 8 and 9) to renew the trademark. You have to do so every 10 years, with the first filing required between the 9th and 10th year after the date of trademark registration. In case the deadline is missed, there is a 6 month grace period available for extra fee as well.
For trademark applications registered through the Madrid Protocol, there is a requirement to file Declaration of Use (Section 71) between 5th and 6th year from the date of registration too.
As for the optional filings, you may file the Declaration of Incontestability (Section 15) after 5 years of continuous trademark use, meaning there were no pauses and it was used consistently. It grants the trademark “incontestable” status, therefore stronger protection. Filing such a Declaration is not mandatory, but it can play a significant and influential role in the enforcement and litigation processes. Although this status does not confer absolute incontestability, a trademark in this status cannot be challenged on grounds of descriptiveness or priority. In addition, such status increases the value of a trademark in negotiations with potential investors, buyers of businesses or trademarks, and potential franchisees. A Declaration of Incontestability can be filed combined with a Declaration of Use, described above. It is also important to understand what continuous use means. If you have been using a trademark for 4 years and then decide to change the concept of the product and stop producing it, you will no longer be able to file such a declaration for these goods.
However, keep in mind that the declaration must relate to specific goods and services you produce and provide. In other words, if after a certain period of time the trademark owner can demonstrate five consecutive years of continuous use in connection with other goods or services for which the trademark is registered, he or she may then file a new declaration, specifically covering those additional goods or services that have now met the required use threshold. In essence, several such declarations can be filed for one trademark.
Things to pay attention to regarding trademark maintenance:
– You have to delete the goods and services with which your trademark is no longer in use in commerce when you file your Declaration of Use (Section 8 or Section 71) filing.
– When filing a Declaration of Use, one specimen per class shall be provided. If the specimen you file fails to demonstrate lawful use of your trademark in commerce, the USPTO may refuse your Section 8 or Section 71 filing, which could ultimately result in the cancellation of your registration.
Timely and accurate filings ensure your trademark registration is alive and gives the trademark owner all the benefits. A U.S.-licensed trademark attorney may answer any questions or queries about filing the declarations and give you reliable advice.
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