If you think that obtaining trademark registration certificate and paying the corresponding fees is the last thing you will need to take care of, well then, you are wrong. In this instalment of the IP Insight series we will navigate you through selected jurisdictions outside EU with the most peculiar approaches towards genuine use. We will start off with the US where there are quite a few important steps to take in order to maintain your registration alive. Some of these are (sadly) missing in the EU jurisdictions.   


Genuine use of your trademark in commerce is of paramount importance. That is not all. In the US you must also file certain documents at regular intervals to show that you're continuing to use your trademark. If you don't file these documents before the deadline, your registration will be cancelled, will expire, or the extension of protection to the US will be invalidated (if you filed via WIPO under the Madrid system). 


USE IN COMMERCE AND PROOF OF USE

Remember that trademark owners are only entitled to a federal registration if they're using their trademark in commerce. That's why most applicants submit specimens when they apply for a trademark protection – to show that they are already using their trademark. However, demonstrating trademark use once isn't enough. You must regularly demonstrate use throughout the life of your trademark if you want to maintain your registration.


DECLARATION OF USE

Every now and then you will need to submit a signed declaration saying that you're continuing to use your trademark for the goods or services covered by your registration. Also, you will need to submit one specimen for each class of goods or services. The documents will be then examined by the United States Patent and Trademark Office (USPTO) to determine if you meet the requirements to maintain your registration. It may happen that your registration will get audited. In that case, you'll need to provide more proof of use. If you don't provide acceptable proof of use, you'll need to provide proof of use for each and every good and service listed in your registration in the audited classes or delete any goods and services for which you can’t prove use, but also pay a fee for each class with deletions.


HOW MUCH WILL YOU PAY FOR DELETION (AND WHAT IF YOU DON’T)?

If you submit a declaration of use but then delete goods or services before your maintenance document is accepted, you'll be required to pay a fee for each class with deletions (250$). If you're required to pay the fee but you don't pay it when you delete the goods or services, the USPTO will send you an office action. And if you don't pay the fee by the deadline for responding to the office action, your entire registration will be cancelled!


WHY PAY FOR DELETION?

 The rationale behind the “deletion” fees is to ensure that you keep your registration up to date by telling the USPTO about changes in your trademark use.  If you don’t you are violating legal requirements of owning a federal trademark registration. Members of the public rely on the USPTO official records of federally registered trademarks (called the "trademark register"). Outdated information about use in the trademark register diminishes its utility to provide notice of trademark rights to businesses and the public.


EXCEPTIONS

You may request to be excused from the requirement to use your trademark. The conditions are very strict however. You must show special circumstances beyond your control and that you don't intend to abandon the trademark.


DEADLINES – FEDERAL US REGISTRATIONS

To keep your trademark registration alive declaration of use must be filed within the specified deadlines

Between the 5th and 6th years after the registration date

Between the 9th and 10th years after the registration date

Every 10 years after that (between the 19th and 20th years, 29th and 30th years, and so on)

 Email reminders are sent by the USPTO when you have an upcoming deadline for a maintenance filing. If you don’t receive a reminder, though, still you must file these documents on time and will face consequences, if you fail to do so.


DEADLINES – INTERNATIONAL REGISTRATIONS WITH US DESIGNATION

Between the 5th and 6th years after the US registration date

Between the 9th and 10th years after the US registration date

Every 10 years after that (between the 19th and 20th years, 29th and 30th years, etc.)

Every 10 years after the International Registration date (you need to renew your IR directly with the WIPO).