The following is an edited transcript of Chapter 20 of my book video Building a Bold Brand: Details and Timing for Maintaining a Trademark Registration
It is critical to docket the deadlines and to properly file for renewal when the time is appropriate. The initial filing after registration is due between the fifth and sixth anniversary of the issuance of the registration certificate. This filing is called a SECTION 8 DECLARATION OF CONTINUED USE.
At the time that the SECTION 8 filing is made, the registrant may, if eligible, also file a SECTION 15 DECLARATION OF INCONTESTABILITY.
- An incontestable mark cannot be challenged unless it has become generic, it has been abandoned, or it was obtained by fraud.
- A registered mark can file for incontestable status after five years of registration.
- The owner must sign a declaration stating that the mark has been continually used by the owner during that five-year period.
- The registration must not be subject to a legal challenge or decision against it.
- It is an added layer of insurance for the investment in your trademark and your brand.
- While filing a declaration of incontestability is not required, it is advisable.
Additional renewals are due, provided that the trademark is still in use, every 10 years after the original registration was issued.
For more details, see Calculating Trademark Registration Renewal Dates
