Worried about losing your federal trademark registration? (photo credit: Ludovic Migneault via Unsplash.com)

After you Obtain a Federal Trademark Registration, can you Lose your Rights?

Given the importance of trademark rights to every business, whether small or large, many business owners are keenly aware that obtaining a federal trademark registration is an essential goal of their business.  Similarly, whether they try to file on their own, use a non-lawyer DIY service, or seek the assistance of an experienced trademark practitioner attorney, many business owners have been successful in obtaining a federal trademark registration.  However, assuming that the job is done, and that these rights are permanent, many never ask the question of what, if anything can cause them to lose those rights.  Contrary to popular belief, owning a registered trademark isn't the end of the story. Federal trademark rights can be lost if they aren't properly maintained or protected, potentially leaving your brand vulnerable. Indeed, a trademark can last a very long time, but only if you stay vigilant and diligent in keeping up with the USPTO's requirements.  

This article is meant to assist those business owners who were too shy to ask that important question "After you Obtain a Federal Trademark Registration, can you Lose your Rights?" We will outline the critical ways in which you could lose your federal trademark rights after registration and how to avoid these pitfalls. Stay informed to keep your trademark secure and protect your business identity.

Ways that you can Lose your Federal Trademark Registration

There are in essence several manners in which you can lose your federal trademark rights even after attaining a registration.  Thus, we will focus (for this article) on the most common post-registration events that can occur. 

• More than 3 Years Non-Use:  Recalling that in the US, trademark rights are tied to use in commerce, it should come as no surprise that if you no longer use a trademark or service mark in commerce, it is considered abandoned,  and you lose your rights.  Trademark non-use abandonment in the US arises anytime that a trademark owner ceases to sell/provide goods and/or services under a trademark or service park for a a consecutive period, typically 3 years.  As we will discuss later, if you have stopped using a mark in commerce for up to 3 years, this could be deemed excusable non-use which would not threaten your rights.  Now, while trademark non-use abandonment can cause an owner to lose trademark rights, non-use by itself will not automatically render the registration canceled.  
• Failure to Timely File Renewal/Maintenance Declarations: After you have attained a federal trademark registration, the United States Patent and Trademark Office (USPTO) requires ongoing maintenance/renewal in order to keep it active.  Part of this process involves filing sworn declarations affirming that you are still using the trademark or service mark for all of the goods and/or services on the registration, or that you have excusable non-use, not exceeding 3 years. In addition to the declarations, you will again have to file appropriate specimens proving and illustrating the use of the trademark with respect to each class of goods and/or services listed in the registration.  You will also need to pay the appropriate filing fee for each class. If you fail to file this documentation (or if it is not accepted) your registration will be canceled!  The first such filing (called a Section 8 Declaration) is due between the 5th and 6th anniversary of the registration date (or, for an additional fee, during the 6-month grace period). The next one is due between the 9th and 10th anniversaries of the registration (called a Section 8/Section 9 Declaration).  Thereafter, you have to repeat the filing every 10 years.  So long as you keep up with this schedule, the trademark registration remains valid.  If you fail to keep up with these requirements, your federal trademark registration will be canceled and lost.  
• If Someone files a Petition to Cancel: The Trademark Trial and Appeal Board (TTAB) allows anyone to file a petition to cancel your trademark registration. These petitions must be filed based on specific grounds, with a few key timeframes to consider.

Non-Use or Abandonment of your Trademark

If the mark has not been in use for three consecutive years and the owner has done nothing to try to resume use of the mark, the USPTO may presume that the owner has abandoned the mark. 15 U.S.C. Sec. 1127;  see Imperial Tobacco Ltd. v. Phillip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Stromgren Supports Inc. v. Bike Athletic Co., 43 USPQ2d 1100 (TTAB 1997).

While non-use abandonment will not automatically lead to an immediate cancelation of your federal trademark registration, it will make that registration susceptible to cancelation either at the time of the mandatory renewal/maintenance filings or will make your registration a potential target for a petition to cancel, filed by a third party. 

Excusable Non-Use

At the time of your renewal/maintenance filings, you have to affirm in your declaration that you are still using the trademark or service mark for all the registered classes of goods/services, OR that you have less than 3 years of excusable non-use, and a good faith intent to recommence use in the near future.  Recall that renewal/maintenance declarations are in essence the same as sworn affidavits under oath to the federal government.  Thus, the information contained within them needs to be truthful. 

Not every non-use is excusable. Excusable non-use is intended to cover only those special and extraordinary circumstances that are beyond a trademark owners control, which led to a temporary interruption in the use of the mark in actual commercial activities.  The USPTO only recognizes a few categories of excusable non-use.  Typically these are related to Acts of God, Natural Disasters, Health Pandemics, Catastrophes (terrorist attacks, fires, etc), Trade Embargos,  severe illness of the owner or someone integral to the business, retooling or relocation,  and/or a recent sale of the owners business to another.

Most notably, if your non-use is related to a purely business decision, this is not considered excusable non-use (and you will likely lose your rights).

Renewal/Maintenance Declarations and Filings

You will receive a renewal reminder when the 1-year period commences.  That renewal reminder will be sent by the USPTO to the email for the owner that is of record.  Therefore, it is critical that you keep your registration up to date with your current email address. If you file the appropriate paperwork during that 1-year period, the regular fee is assessed on a per class basis.  If you miss that 1-year period, you automatically get a 6-month grace period.  However, during the grace period there is an additional filing fee (think of it as a penalty) for each class, in addition to the regular fee. If you fail to file during teh 6-month grace period, your registration will be canceled and is dead. You would need to re-file a completely new application from scratch to re-attain a federal trademark registration.  Therefore it is crucial to keep abreast of these dates.  

It is a good idea to take a close look at your registration certificate and email that you receive upon the successful registration of your federal trademark.  Both will provide insight and information on the renewal and maintenance requirements.

As previously stated, the first required filing (a Section 8 Declaration) is due between the 5th and 6th anniversary of the federal trademark registration (or, as a last resort, during the automatic 6-month grace period at an additional fee).  The second required filing (a combined Section 8 and Section 9 Declaration) is due between the 9th and 10th anniversary (or, as a last resort, during the automatic 6-month grace period at an additional fee). Thereafter, a new combined Section 8 and Section 9 Declaration needs to be filed every 10 years to maintain the federal trademark registration in good standing. 

These filings can be complicated, and errors can result in the USPTO rejecting them, and thus can lead to cancelation of your federal trademark registration. Thus it is always a good idea to consult with an experienced trademark attorney when it is time to prepare and file these forms. 

If your federal trademark registration is based on a foreign registration, extended to the US by way of the Madrid Protocols, the process is similar, though the form in question is the Section 71 maintenance filing. 

Petition to Cancel

A petition for cancellation of a trademark registration may be filed by an interested third-party at any time. However, a mark which has been registered for more than five years may only be cancelled on the grounds enumerated in Trademark Act § 14.  There is a significant filing fee associated with a petition to cancel (currently $600 per class).  A petition to cancel is basically commencing a legal proceeding before the Trademark Trial and Appeal Board (TTAB) seeking to cancel someone's existing federal trademark registration on a specific ground or grounds.  The procedure is governed by 15 U.S.C. Sec. 1064.

During the first 5 years of the registration, the grounds available to initiate a petition to cancel are broader:

1. Non-Use  or Abandonment
2. Genericness
3. Fraud
4. Likelihood of Confusion

After a federal trademark has been registered for 5 years or more, you can no longer initiate a petition to cancel on the grounds of a likelihood of confusion with your own mark.  Rather the available grounds at that time are: 

1. Non-Use  or Abandonment
2. Genericness
3. Fraud
4. Bad Faith

Just like every legal proceeding, there are various technicalities, filings, deadlines, and rules to follow.  Likewise, this is an adversarial proceeding (meaning that the owner of the federal trademark registration will have an opportunity to file opposition to your petition, and engage in the process -- therefore you will need to do more than just the initial petition). 

As the owner of a federal trademark registration, you will get an opportunity to counter the petition, but in doing so you need to submit evidence and/or arguments to effectively and appropriately challenge and counter the petition. 

It is always a good idea to engage a lawyer for this process, as petitions to cancel are very challenging.  Similarly, the process assumes that you have legal representation (and they will not cut slack for a non-lawyer's failures to abide by the process). 

Stay Protected With a Trademark Practitioner Attorney

Navigating the complexities of trademark law requires expertise and vigilance. Most business owners, rightly so, are focused on running their business, and neither have the knowledge nor experience to stay abreast of all the technicalities and requirements of the USPTO as to federal trademark registrations.   That is where an experienced trademark practitioner attorney can be a vital resource, protecting you from losing the federal trademark rights you fought long and hard to obtain.  From applying and prosecuting an application and maintaining registration status to defending against challenges, a trademark practitioner attorney can ensure your rights remain intact. With professional guidance, businesses can avoid costly losses and enjoy the long-term benefits of a secure trademark.  

Our law firm is well-versed in the USPTO trademark process.  We have assisted clients from across the entire US, and even over a dozen other countries.  That experience means that we can help you keep your rights in good standing and protect against the loss of those trademark rights.  

If you're unsure about your trademark's status or need assistance managing your intellectual property, contact us to speak with an experienced trademark practitioner attorney.  Remember, the initial consultation is always free and with no obligation to hire.  

Contact us for a Free Consultation on your Trademark matter!