Your 5-Minute Guide to Trademark Maintenance

By: M. Zane Johnson, Esq.

Securing a trademark for your business is a big step in protecting your brand, but registration is just the beginning. In order to maintain the legal protections that come with trademark registration, you need to stay proactive. Proper trademark maintenance ensures that your rights remain intact and your brand continues to benefit from the exclusivity that comes with registration.

In this guide, we’ll walk through the key steps for maintaining your trademark, including important filing deadlines, fees, and strategies to help you monitor your mark effectively. We’ll also cover common pitfalls and how to avoid them, so your trademark remains secure for years to come.

1. Use It or Lose It: Keep Your Trademark in Active Use

One of the most critical aspects of trademark maintenance is ongoing use. The United States Patent and Trademark Office (USPTO) grants trademark rights based on use in commerce. So if you stop using your mark in connection with the goods or services in your registration, you risk losing your protection.

If a trademark is not actively used for a prolonged period and there is no intent to resume use, it can be deemed “abandoned,” which opens the door for someone else to register a similar mark.

How to Stay Compliant:

- Ensure that your trademark is actively used in connection with the goods or services listed in your registration. This can include displaying the mark on products, packaging, websites, or marketing materials.

- Maintain documentation of your trademark’s use, such as copies of advertisements, product catalogs, and screenshots of your online presence. These records can serve as evidence if you ever need to defend your trademark.

Tip: Your trademark must be used as it was registered, without significant changes, to avoid jeopardizing your rights. As your brand develops, make sure that your trademark hasn’t changed so significantly that you now need to register again.

2. Ongoing Filing Requirements: The Deadlines You Can’t Miss

Once your trademark is registered, it’s crucial to keep track of several key deadlines for USPTO trademark maintenance filings. Missing these filings can result in your trademark being canceled.

The two main types of maintenance filings are the Declaration of Use and the Application for Renewal. Here’s a breakdown of when you need to file:

- 5-6 Years After Registration: Declaration of Use (Section 8)
  - - You must file a Declaration of Use between the 5th and 6th year after registration. This filing is a sworn statement that your trademark is still in use in commerce. Failing to file this declaration can result in your trademark being canceled.

- 9-10 Years After Registration: Declaration of Use and Application for Renewal (Sections 8 & 9)
  - - In addition to the Declaration of Use, you must file an Application for Renewal between the 9th and 10th year after registration. This extends the protection of your trademark for another 10 years.

- Every 10 Years After That: Declaration of Use and Application for Renewal (Sections 8 & 9)
  - - After your first renewal, you’ll need to repeat this process every 10 years to maintain your trademark rights.

Fees:

Starting in 2025, the USPTO fee to file your first Section 8 Declaration will be $325 per class. Meanwhile, the filing fee for the Declaration and Renewal is $650 per class. Keep these costs in mind when planning for the future maintenance of your trademark.

Tip: Set reminders well in advance of these deadlines to give yourself plenty of time to file the necessary paperwork and gather any supporting documentation.

3. Make Your Trademark Incontestable

After five years of continuous use following registration, your trademark may become eligible for incontestability under Section 15 of the Lanham Act. Filing a Declaration of Incontestability strengthens your trademark by limiting the grounds on which others can challenge your rights to the mark.

Once your trademark achieves incontestable status, it becomes much harder for third parties to argue that your trademark is invalid, for example, by claiming it lacks distinctiveness.

Why This Matters:

An incontestable trademark is a powerful tool in any legal dispute. It provides conclusive evidence of your exclusive right to use the mark, which can be incredibly valuable if you need to enforce your rights or defend your brand in court.

Tip: While incontestability is not automatic, filing for it at the five-year mark is an easy step to further safeguard your brand.

4. Addressing Changes in Your Business

The products and services that your business offers are likely to change over time. It’s important that your trademark registration reflects the products and services that you’re actually offering. If you’ve expanded your offerings or made substantial changes, it may be necessary to file a new trademark application to ensure your trademark protection aligns with your current business model.

Failing to update your registration can leave parts of your business exposed to infringement or create complications during routine maintenance filings.

When to Update:

If you’ve changed the nature of your business, added new products, or modified the core services tied to your trademark, consider filing a new trademark application. This will ensure continued protection of your trademark as your business grows.

5. Policing Your Trademark: Staying Vigilant Against Infringement

Owning a trademark is only half the battle—it’s also your responsibility to police your trademark and ensure that others aren’t infringing on your rights. This involves monitoring the marketplace for unauthorized uses of similar marks that could cause confusion among consumers.

Failing to take action against potential infringers can weaken your trademark and make it harder to enforce your rights in the future.

How to Monitor:

- Regularly check for new trademark applications that are similar to yours. You can do this through the USPTO’s online database.

- Keep an eye on competitors and businesses in your industry to identify any potential conflicts.

- Consider using a trademark monitoring service to receive regular updates on new filings that could pose a threat to your trademark. For example, MZA Legal offers trademark monitoring services for $50/mo., including quarterly reports, and an annual brand audit.

Tip: Taking swift action against potential infringers is crucial to protecting your trademark. Even a small similarity in a competitor’s mark can dilute the strength of your brand if left unchallenged. Generally the first step is to send a legal demand letter. If the response is not satisfactory, you may want to consider filing a lawsuit to enforce your rights.

Conclusion: Stay Proactive to Protect Your Brand

Maintaining a trademark requires consistent attention, but the effort is worth it to safeguard the brand you’ve worked hard to build. By keeping up with your USPTO trademark maintenance filings, monitoring for potential infringement, and adapting your registration to reflect any changes in your business, you’ll ensure your trademark remains a valuable asset for years to come.

Trademark maintenance is an ongoing process. If you need help navigating maintenance filings, monitoring your trademark, or enforcing your rights, we’re here to assist. Reach out to discuss how MZA Legal can save you time and money and protect your brand with our trademark maintenance services.