Trademark Application Questions
Following a few basic guidelines, outlined in the questions below, can ensure that a trademark maintains its distinctive characteristic and can prevent a loss of trademark rights.
These symbols can be used as a means of claiming legal rights to the trademark. It is not required to have an application pending on a federal or state level to use the ™ or “sm” symbols. The ® may only be used upon completion of registration with the USPTO. If the ® is misused, the USPTO can deny attempts for future registration.
Proper usage of a trademark can ensure that the mark will not become generic as well as prevent loss of trademark rights through abandonment or misuse. Trademarks should always be used as an adjective followed by the generic name of the product or service. Trademarks should never be pluralized. In addition, trademarks should never be used as verb or made possessive. Following these basic guidelines will help strengthen the mark as a whole.
The purpose of monitoring for trademark infringement is to avoid the “why didn’t you do anything” situation. Courts are more likely to excuse or minimize the impact of third party use if the trademark owner can demonstrate that it was actively pursuing other third party users.
Trademark owners can monitor for potential infringers by having Federal and State trademark research done every year. It is important that if potential infringers are discover, that the trademark owner promptly notify potential infringers. Traditionally, a cease and desist letter will accomplish this, however, if needed a trademark owner may choose to pursue further legal action and seek damages.
o avoid consumer confusion, any third party marks should be clearly identified with the appropriate ™, sm or ® symbols. Attribution should be given to the appropriate owner of the trademark and a general disclaimer should be included in the terms and conditions of the website.
Under fair use, an entity may use a third party’s trademarks descriptively or otherwise in a manner that refers to the actual source of goods or services. A trademark may not be used if it creates a likelihood of confusion as to the affiliation or source or dilutes or disparages the trademark.
A Section 8 Affidavit must be filed between the 5th and 6th year of the registration date; the USPTO fee is $100. A Section 8 Affidavit must be filed every 5 years to ensure the active status of the mark. At the same time a filing of “Declaration of Incontestability” may also be filed to declare incontestability of a mark for a USPTO fee of $200.
The mark then needs to be renewed between the 10th and 11th year after initial registration with a Section 9 Affidavit plus the USPTO fee of $300. After that, marks are renewed every 10 years, thus the 20th and 21st year after initial registration, and so on.
However, there are other steps in the interim, namely, filing the necessary affidavits.
Most States are similar to the Federal registry in that the mark needs to be renewed every 10 years. Please call us for a free trademark consultation for your State.
An affidavit is a post-registration form that the USPTO requires from all applicants. Each affidavit has a specific purpose:
- The Section 8 Affidavit assures the USPTO that the mark is actively in use. The filing of this form is to prevent inactive marks from appearing on the register.
- The Section 15 Affidavit is a Declaration of Incontestability.
- The Section 9 Affidavit is the renewal application.
The Section 8 Affidavit is a form that must be filed with the USPTO in successive intervals. The current rate is $100 per class. This form is a declaration of continued use and its existence is to prevent inactive marks from staying on the register. The time schedule is as follows :
- Between the 5th and 6th year after the registration date – for an extra $100 per class, you may file within the six-month grace period.
- Between the 9th and 10th year after the registration date – for an extra $100 per class, you may file within the six-month grace period.
- Each successive 10-year period thereafter.
FAILURE TO FILE THE SECTION 8 WILL RESULT IN CANCELLATION OF THE REGISTRATION.
The Section 15 Affidavit is an optional form that may be filed with the USPTO if the mark has been in continuous use on the Principal (not Supplemental) Register for 5 consecutive years after registration. The fee is $200 per class.
The purpose of the Section 15 Affidavit is to declare incontestability of the mark. As the USPTO states: filing this affidavit means “the registration is conclusive evidence of the validity of the registered mark and its registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce, subject to certain defenses and exceptions.”
Simply put, incontestability ensures that the applicant’s mark “cannot be challenged on the ground that the mark is merely descriptive.”
The Section 15 Affidavit may be filed alone or in conjunction with the Section 8 Affidavit. Both forms can be accessed here
This form is generally referred to as the Renewal Application and must be filed every 10 years. Since the time for filing Section 8 coincides with the Section 9, there is a combined form. The current rate is $400 per class (plus the Section 8 Affidavit filing fee of $100 per class). For an extra fee of $200 per class ($100 for the Section 8 & $100 for the Renewal Application), you may file, within the six-month grace period.
FAILURE TO FILE THIS DOCUMENT WILL RESULT IN CANCELLATION and/or EXPIRATION OF THE REGISTRATION.
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