An important aspect of trademarks that many people may not realize is that they are use-based rights. Basically, this means a trademark is only entitled to be registered if the mark is actually being used. Likewise, a trademark registrant needs to continue to use the mark in commerce in order to maintain registration and must take action to renew a trademark registration at specific points in time (e.g., at year 5, 10, 20, and so forth). When reaching these milestones, trademark owners are obligated to submit specimen materials showing that the mark is still in use in interstate commerce.
For many years, trademark renewals were on a quasi-honor system basis whereby a trademark owner needed only submit one specimen showing use in commerce per each registered class. However, in an effort to crack down on trademark squatting, the United States Patent and Trademark Office (USPTO) is now actively conducting quality checks at random that require trademark owners to submit additional specimen to show that all goods and/or services in specified classes are still in use.
In addition, the USPTO instituted a fee to combat trademark squatting. The fee could be considered a quasi-fine. For example, if a trademark owner is required to delete goods, services, or classes in response to a USPTO quality check, the agency will impose a $250 per class fee.
USPTO Guidance on Trademark Maintenance Fee
The USPTO advised that there are two ways to avoid paying the $250 fee:
- delete the goods, services, or classes when filing your Section 8 or 71 Declaration: or
- file a Section 7 Request to Amend a registration prior to submitting a Section 8 or 71 Declaration.
If the Section 7 Request to Amend a registration is filed prior to filing a Section 8 or 71 Declaration and the only amendment requested is the deletion of goods, services, and/or classes, the Section 7 Request to Amend can be submitted for free.
The USPTO has indicated that the goal of imposing a fee for deletions made after a Section 8 or 71 Declaration is filed and before the Declaration is accepted is to strengthen the integrity of the trademark by securing more accurate and up to date information from the trademark owner.
USPTO Issues Trademark Management Best Practices
The USPTO issued guidance regarding best practices aimed at avoiding the $250 fee for certain deletions. These best practices include:
- creating a checklist for evaluating and confirming the use of the trademark in commerce with registered goods and services;
- maintaining notes regarding the people and records utilized to obtain this information; and
- retaining a record of evidence of your mark’s current use in commerce, such as photos of each good bearing the trademark, printouts or screenshots of supporting webpages with the date and URL, and copies of print advertising or promotional materials.
Adhering to these best practices help provide the information necessary to determine whether certain goods, services, or classes should be left off a Section 8 or 71 Declaration, especially if followed when a Section 8 or 71 Declaration deadline is approaching. Following the best practices is also helpful when a Section 8 or 71 Declaration deadline is far off, as the Section 7 Request to Amend a registration is free to file when done for the purpose of deleting goods, services, or classes from a registration, which offers protection in the future from having to pay the new $250 filing fee for having to delete certain goods, services, or classes after a Section 8 or 71 Declaration has been filed.
Have Questions? Contact an Experienced Trademark Attorney in Los Angeles
If you have questions about effective trademark maintenance, then now is the time to speak to an experienced and knowledgeable trademark lawyer in Los Angeles with the Omni Legal Group. Our legal team is ready and able to assist by researching your trademark, filing your federal trademark application, ensuring a smooth process, and assist with maintaining your mark. We will be there to help guide you through the entire trademark registration and maintenance process.
Schedule a consultation today, call 855.433.2226 or visit www.OmniLegalGroup.com to learn more.