If you are ready to enter the U.S. market or your goods and services are already present on the largest market in the world, you must take care of your trademark protection as soon as possible, and to pass the procedure of registration.
In my previous publication I told about two most popular procedures of trademark protection in USA. This time I’ll tell about certain peculiarities of trademark maintenance in the United States.
I would like to draw your attention to the fact that the whole system of trademark protection in USA is entirely tied to its use. We can see this principle from the moment of filing application for trademark registration as the main ground for filing is the use of a trademark. Similarly, in order to maintain your trademark, you must regularly prove its use.
Within what time frame the use must be proven
Within the first ten years you have to bear in mind two main deadlines prior to which the owners of trademark registrations in USA, issued both under the national and international procedures, are obliged to file a Declaration of Use of a trademark together with evidences of use, and to pay the relevant fee:
First deadline: between the 5-th and 6-th anniversary of the registration date.
The owner of a trademark must pay a fee and file a Declaration of Use, evidences of trademark use or a Declaration of Excusable Nonuse. Also, if desired, a Declaration of Incontestability may be filed.
If a Declaration, payment and evidences of use are accepted, trademark registration will be valid during the remainder of 10-years period calculated from the registration date.
Second deadline: between the 9-th and 10-th anniversary of the registration date.
The owner of a trademark must pay a fee and file a Declaration of Use, evidences of trademark use or a Declaration of Excusable Nonuse. It is also important to file the claim on extension of the validity of registration for further 10 years.
In the subsequent 10-years periods you must file a Declaration of Use or a Declaration of Excusable Nonuse, evidences of use and the claim on registration renewal between each 9-th and 10-th anniversaries calculated from the registration date. It is also important to pay the relevant fee for this action.
What must be filed in order to prove the use
The evidence of use (a “specimen”) can be any document or any picture proving doing business on the territory of the United States. In order to prove production of goods you may file a picture of goods on the store shelves or to make screen shots of Web-pages of Internet shop, selling goods with an option of postal delivery to the U.S. territory, together with the text oriented for local customers. One evidence of use is required per each class of goods, even per each particular product or per each service. If you cannot prove the use of all your goods/services, don’t despair – you may file a Declaration of Use with regard to the part of goods/services; in this case, the goods/services with regard to which the evidences of use are not filed will be removed from registration.
What will happen if nothing is done
Failure to file a Declaration of Use or a Declaration of Excusable Nonuse results in cancellation of a trademark registration in the United States, it means that your trademark will not be protected and you will lose all the rights to it. In view of this, please, take care of your intellectual property or entrust it to the professionals.
If you need any assistance with regard to maintenance of your trademark, the team of our associates is always ready to provide you with full range of services not only in Ukraine but in other countries as well.
Author: Yuliia Matsiuk
Reprinting, full or partial copying of the text of this article, its translation, posting of the article or its translations at other Web-sites or other Internet-resources, any other use of the article without written consent of the author are strictly prohibited. The violation is punishable in accordance with the Law of Ukraine «On Copyright and Related Rights”.