Congratulations! Your registration with the United States Patent and Trademark Office was approved and you are now the proud owner of a registered trademark. Is that the end of the story?

Unfortunately, it is not. Among other requirements such as policing your mark, the USPTO requires renewals to be filed between the 5th and 6th year of registration and again between the 9th and 10th year of registration to keep your trademark valid and enforceable.

The first registration period, the one occurring between the 5th and 6th year of registration, is when you have to file a Section 8 Declaration of Use (or “excusable non-use,” but you’re going to be using it, right?). As the name implies, this filing tells the USPTO that the trademark is actually being used in commerce to signify the origin and quality of your goods or services. Basically, the USPTO wants to know you are still using your trademark and what you are using it for, or that you have a legally-recognized reason for not currently using it but still intend to use it. At this time you may also be eligible to file a Section 15 Declaration of Incontestability. Your trademark has to have been registered on the Principal Register and meet some other requirements, but once a trademark becomes incontestable, certain aspects of it can no longer be challenged (including the validity of the trademark itself).

You have one year to make these required filings (that’s the part about “between the 5th and 6th year”) without paying a penalty. If you haven’t made your required filing by the end of this period, the USPTO will grant you a 6 month grace period — but you’ll pay a penalty to use the grace period. After that, the USPTO will consider your mark abandoned and cancel it.

The second registration period occurs between the 9th and 10th years of your registration. It actually occurs every 9th and 10th year thereafter (meaning between the 19th and 20th year, and again between the 29th and 30th year, etc.). During these 10-year renewal periods, the USPTO requires you to file a joint Section 8 and 9 filing. The Section 8 filing is the same one you were required to file during the window between your 5th and 6th year we talked about earlier. The Section 9 filing is simply an application for renewal, which has to be done every ten years. Once again, the USPTO will offer you a 6-month grace period if you miss the filing window, and once again they will charge you penalty fees if you need to use the grace period. And if you haven’t made the required filings by the end of the grace period (and paid the penalty fees in addition to the normal fees), the USPTO will consider your mark abandoned and cancel it.

Henry Law Firm can help you meet your requirements whether we originally helped you obtain your trademark registration or not. Please call or email if you would like to speak with an experienced intellectual property professional.

Henry Law Firm is Your Trademark Authority™

Take this hypothetical: you want to open a bakery selling bagels. Your community already has several bakeries, but you think other people would prefer your recipe for bagels. You invest in equipment, lease a building, and train kitchen staff. The twist for your bagel is that you use a small amount of bay leaves to provide a light herbal aroma. Because of this unique characteristic, you brand your product “Baygels,” and it becomes an instant hit. You also take great care you use when making your Baygels branded bagel.

People love your Baygels branded bagels! Your store is a success, but the other bakeries take notice. To try to win back their customers, they start to sell “Baygels” too, except they don’t use your recipe. Their quality is inconsistent because they don’t use quality ingredients. One day, a customer leaves you a bad review for something they purchased from a competitor.

This is the situation that trademarks address.

A trademark is a way for people to reliably identify the source of goods or services. The overall idea is that there is a cost to the consumer associated with searching out quality goods and services and vetting their suppliers. There is another cost borne by producers associated with developing a good product or service and a good reputation with customers, also known as “good will.” A trademark is a way to enable consumer confidence in the source and quality of the goods or services without having to verify it each time.

When you register your trademark with a state or federal government, you are protecting your brand and you are ensuring for customers a consistent origin and quality of goods or services. In short, your customers can be certain they are getting the good or service they intended to buy, time and again.

Henry Law can help you navigate the trademark registration process from evaluating your potential brand, to registration and maintenance of your registration, and even help you prosecute infringers.

Henry Law Firm is Your Trademark Authority™

Rotoworks Int’l Ltd. v. Grassworks USA, LLC, W.D. Ark., No. 07-CV-5009

After a weeklong trial in Fayetteville Federal District Court, a jury determined that the defendant engaged in a bait-and-switch operation in this trademark infringement case. Our firm represented the New Zealand trademark owner, Rotoworks Int’l Ltd. The defendant, Grassworks USA, would advertise the New Zealand manufactured equipment but then ship a knock-off version to the customer. A jury returned a verdict of $375,000 for intentional trademark infringement and the court additionally awarded $191,699 in attorneys’ fees.

Can we get a calculator?

This is the note from the jury foreman during deliberations in this case. Usually that is a good sign for a plaintiff in any jury trial, and it was in this instance.

Henry Law Firm is Your Trademark Authority™