What we need from you -- 5-to-6-year papers in a trademark registration
Target audience. This page is written with any of two readers in mind:
If you are not in either of these categories then this page is unlikely to be of interest to you.
Note: this page is meant to be of general interest but should not be taken as a substitute for advice of competent US trademark counsel. Before making any decisions about the issues mentioned here, you should retain competent US trademark counsel who can consider all of the details of your particular situation. Reading this page does not create an attorney-client relationship.
Making sure you know your filing basis. A US trademark registration will have come into existence due to the filing of a US trademark application. The trademark application may have been filed under any of several "filing bases":
Regardless of the particular filing basis that gave rise to the registration, there is a requirement that a "declaration of continued use" be timely filed or the US trademark registration will be canceled. The papers cannot be filed sooner than the fifth anniversary of the registration date, and must be filed prior to the sixth anniversary of the registration date. This defines a one-year "filing window" during which the papers must be filed to avoid cancelation.
There is also a six-month "grace period" during which the declaration-of-continued-use papers may be filed along with a late fee.
The declaration-of-continued-use papers, which for purposes of this web page we will call "renewal" papers, are filed under "Section 8" if the registration was granted on an application filed under Section 1 or Section 44(e), and are filed under "Section 71" if the registration was granted on an application filed under Section 66(a). The requirements for Section 8 and Section 71 papers are roughly the same and so the discussion which follows applies equally for both.
When to file the renewal papers. Some trademark owners put off filing the renewal papers until near the end of the one-year window. This is, of course, unwise, for the simple reason that if the USPTO finds fault with the renewal papers there may be little or no remaining time to remedy such a fault. It is extremely desirable to file the renewal papers on the day the window opens or shortly thereafter.
There is a six-month grace period available after the six-year period has ended. Thus, renewal papers may be filed between six years and six and a half years from the date of the grant of the trademark registration, so long as a grace period fee is paid to the USPTO. At press time, the grace period fee is $100 per class being renewed.
Prior to filing the renewal papers there are several issues that must be addressed. These include:
These issues will be discussed in turn.
Sorting out any changes in the name of the owner. During the five years that have passed between the grant of the trademark registration and the present day, the owner name may have changed, whether due to assignment or merger or change of name. It is important to obtain an Abstract of Title from the USPTO and to compare the name in the registration certificate with the information in the Abstract of Title. If need be, assignment or other papers affecting title may need to be recorded so as to provide a clear chain of title from the registrant name to the name of the party that now plans to file the renewal papers.
Keep in mind that if the registration was granted on an application under Section 66(a) (Madrid Protocol), then any name change papers must be recorded with the International Bureau of WIPO and not with the USPTO. On the other hand, if the registration was granted on an application under Section 1 or Section 44(e), then any name change papers must be recorded with the USPTO and not with WIPO.
Updating the owner's address if it has changed. During the five years that have passed between the grant of the trademark registration and the present day, the owner's address may have changed, whether due to assignment or merger or change of name. It is important to view the TARR report at the USPTO and to compare the name in the registration certificate with the information in the TARR report. If need be, an address change may need to be filed so as to bring the address up to date.
Keep in mind that if the registration was granted on an application under Section 66(a) (Madrid Protocol), then any address change papers must be filed with the International Bureau of WIPO and not with the USPTO. On the other hand, if the registration was granted on an application under Section 1 or Section 44(e), then any address change papers must be filed with the USPTO and not with WIPO.
(If needed) getting a new Power of Attorney in place. It may happen that the registrant wishes to use different US trademark counsel for the 5-to-6-year renewal papers than the US trademark counsel used for the initial prosecution of the trademark application. Alternatively it may happen that the registrant filed and prosecuted the trademark application pro se but now wishes to use US trademark counsel for the 5-to-6-year renewal papers. In either event, it is desirable to have a Power of Attorney from the registrant which may be filed with the USPTO.
(If needed) getting a new Domestic Representative in place. If the registrant is located outside of the United States, it is advantageous to appoint a Domestic Representative within the United States, if this has not already been done. For example the law firm of the attorney named in the Power of Attorney may be willing to serve as Domestic Representative.
Another potential problem is that an entity may have previously been appointed as Domestic Representative, but the entity may no longer have a connection with the registrant, or may no longer exist, or may have a different address than before. For example, the registrant may have appointed a former law firm as Domestic Representative. It is advantageous to revoke the previous appointment and to appoint a new Domestic Representative.
Figuring out whether all trademark classes are still in use in commerce in the US. Under US law, it is extremely important to file the renewal declaration only with respect to the class or classes for which the mark is actually in use in interstate commerce in the United States. If one or more of the classes listed in the registration are not classes for which the mark is actually in use in interstate commerce, it is important to delete such class or classes from the registration. This is accomplished in the renewal papers.
The consequences of getting this wrong are severe. Courts have canceled trademark registrations in which it developed that the registrant signed a Declaration stating that the mark was still being used in interstate commerce in the US with respect to a trademark class for which the mark was not, in fact, still in use in commerce in the US.
Figuring out whether all of the goods/services in each class are still in use in commerce in the US. Even within a particular trademark class, it is extremely important that the renewal Declaration be filed onlywith respect to goods/services for which the mark continues to be in use in commerce in the US. If one or more items of goods or services within a class are not goods/services for which the mark continues to be in actual use in interstate commerce, it is important to delete the one or more items of goods or services from that class in the registration. This is accomplished in the renewal papers.
What does "interstate commerce" mean? For purposes of US trademark law, "interstate commerce" means either or both of the following:
What does "use" mean? For goods, "use" means actual shipments of the goods in commerce, with the mark upon the goods (for example by means of a package label or printing on the goods). For services, "use" can mean actual offering of the services in commerce, with the mark appearing in the offer of services.
Figuring out what specimens to use. The renewal papers are required to include a so-called "specimen of use" for each trademark class that is being renewed. For each trademark class the specimen must show use for at least one of the items listed in that class.
In the case of a "goods" class, the specimen may show (for example) the actual goods as they look when they pass in interstate commerce, showing perhaps the mark on the goods. Or the specimen may show product packaging for the goods, with the mark on the product packaging.
For goods, it is easy to identify some kinds of would-be specimens that are almost certain to be rejected by the USPTO. Advertisements, for example, are routinely rejected, as are promotional materials and shipping invoices and brochures and business cards and letterhead. Printer's proofs for packaging and package labels are certain to be rejected.
In the case of a "services" class, the specimen may show, for example, a web site offering the services, or promotional materials or advertisements offering the services.
In any case, the specimen must show the mark in a manner that indicates the origin of the goods/services. The mark, in other words, must show the mark used as a trademark. The mark as shown in the specimen must match the drawing of the mark that appears in the trademark registration. The specimen must show goods/services listed for one or another of the trademark classes for which the renewal papers are being filed. Stated differently, there must be as many specimens as there are trademark classes in the renewal papers.
For e-filing, it is desirable if the specimens can be in JPG (JPEG) or PDF format. It is desirable if the specimens are provided to OPLF electronically and not on paper or by fax.
One way to get this wrong is to provide a specimen of use that shows the a mark that is not the mark shown in the US registration certificate.
Figuring out whether there have been five years of exclusive and continuous use of the mark with the goods/services. If the registrant is able to say that it has used the mark exclusively and continuously for five years, then the registrant is entitled to file not only a Section 8 Declaration but also a Section 15 Declaration. The value of the Section 15 Declaration is that it makes a record that the registration is "incontestable". An incontestible registration is at less risk of being canceled (in a cancelation proceeding) than a registration that is not incontestable.
Thus, if the mark has indeed been exclusively and continuously used for five years, it is very desirable for the registrant to file Section 15 papers.
If it is so desirable, and indeed so easy, to obtain "incontestable" status, why doesn't every registrant do it?
Deciding when to file Section 15 papers. Section 15 papers may be filed at any time that the prerequisites are satisfied. For example if a trademark owner has been using the mark continuously and exclusively for the five years immediately preceding the date of filing of the Section 15 papers, then the Section 15 papers could be filed five years after registration day, or fifteen years after registration day, or one hundred fifteen years after registration day.
The trademark e-filing system of the United States Patent and Trademark Office (called "TEAS") makes it very easy to do the Section 8 papers and Section 15 papers at the same time. If a client of our firm chooses to file a combined Section 8 and Section 15 paper, we charge only the same professional fee that we would have charged for a Section 8 paper alone. In practical terms, this means that can be very inexpensive (only the $200 per-class goverment fee) to gain "incontestable" status.
Deciding how the renewal papers will be signed by the registrant. While it is possible to file renewal papers on paper, it is the strong preference of Oppedahl Patent Law Firm LLC to file the renewal papers electronically. With an electronically filed renewal declaration, there are three ways for the registrant to sign:
For a registrant who is geographically distant from our office, clearly choice A is not workable.
Our preference is choice C. With this approach, we prepare the papers and then we send an email to the registrant (or, if the registrant is represented by trademark counsel outside of the US, to the trademark counsel so that it may be forwarded to the registrant). The registrant opens the email message and the message contains a link to a special web page. The web page contains the text of the renewal (and, optionally, Section-15) papers, and has a space where the registrant can enter a typewritten "signature". After entering the e-signature, the registrant clicks a "submit" button. The e-signed document comes back to us and we e-file it with the USPTO.
Approach C is quick and simple and saves time for us. It saves the registrant the possible expense of sending a fax back to us (as would be the case with approach B).
Approach B is what must be employed if approaches A and C are not available. With approach B, we prepare the papers that require signature and then we send the papers as a PDF file in an email attachment. We email the papers to the registrant (or, if the registrant is represented by trademark counsel outside of the US, to the trademark counsel). The PDF file gets printed out and the registrant signs it with pen and ink. The signed paper is then faxed to us or may be scanned as an image file and emailed to us. We charge a substantial additional professional fee if approach B is used instead of approach C.
To be able to proceed appropriately, we need to know which of the signing approaches (presumably either B or C) the registrant will be comfortable with. To this end the client needs to keep in mind that we charge a higher professional fee for approach B than for approaches A or C, because it is more work and there is more to go wrong in the process.
What things cost. The 5-to-6-years renewal requires payment of a government fee (at press time, $100) per trademark class being renewed. In addition, OPLF charges a professional fee to carry out the renewal.
The professional fee charged by OPLF to carry out the 5-to-6-years renewal is greater or smaller depending on the extent of work required to carry out the renewal. The smallest professional fee is charged in the event that the client provides each and every needed piece of information at the five-year mark (with a year to go before the last date for filing), with nothing missing and no issues unanswered. This requires at least the following:
Only if all of these requirements are met, with many months to go before the end of the six-year date, can OPLF offer its professional services at its least expensive rate (at press time, $400).
It is commonplace for OPLF's professional fee to be much larger when these requirements are not met. Here are examples of circumstances that lead to higher professional fees:
Payment in advance. For new clients, OPLF generally asks to be paid in advance. The client is asked to send funds in advance which OPLF places for safekeeping into its escrow account, and the funds are applied toward later bills for work carried out.
Payment in full. Clients and trademark firms located outside of the US are cautioned to make sure that any bank wire transfers to OPLF be set up so that payment in full is actually received at OPLF's bank. This means that all bank fees and wire transfer fees need to be paid at the client's end. The payor is cautioned to select a paying bank that is able to send funds directly to OPLF's bank, rather than selecting a paying bank that is unable to send funds directly but must use some intermediary bank to deliver the funds to OPLF's bank. If the funds as actually received at OPLF's bank are deficient, then the client will be expected to send additional funds to make up the deficiency.
What comes four years later. After the 5-to-6-year papers have been filed and accepted by the USPTO, the next important due date is the so-called "every-10-year papers". The every-10-year papers must be filed between the ninth and tenth anniversaries of the registration date, and between the nineteenth and twentieth anniversaries of the registration date, and so on ad infinitem. Failure to file the every-10-year papers will lead to the registration being canceled.
For a registration granted on an application based upon Section 1 or Section 44(e), the every-10-years papers, called "Section 9" papers, are filed directly with the USPTO.
For a registration granted on an application based upon Section 66(a) (Madrid Protocol), renewals must be filed every ten years, directly with the International Bureau of WIPO. The renewal must be paid during the six months before expiry of the period of protection (before the ten-year anniversary of registration) or may be paid with a late fee during the six months after the ten-year date.
In addition, for a registration granted on an application based upon Section 66(a), the registrant must file with the USPTO affidavits of continued use under Section 71 every ten years. In particular the Section-71 affidavits must be filed within the six-month period preceding the end of every ten-year period after the date on which the USPTO issued the certificate of extension of protection, or within a three-month grace period with an additional surcharge