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  For Patent or Trademark Inquiries:
Call: 1-866-387-5386, or
E-mail: ash@ipprocure.com
 
IP Legal Services
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90 Great Oaks Blvd., San Jose CA 95119, Tel: 1-866-387-5386
 
Maintaining a Trademark Registration
Registration of a mark does not automatically grant continued protection. It is necessary to file certain documents attesting to the constant use of the mark in order to claim continued protection. This article explains in detail these requirements and the process and steps to be taken to ensure continual protection after registration of the mark.
I. Section 8 Affidavit
The United States trademark office requires the filing of a Section 8 affidavit between the fifth and sixth year after issuance of registration of a trademark or within the 6 month grace period after the expiry of the deadline with an additional fee of $100. The Act further provides that failure to file the affidavit within the fifth and sixth year of registration of a mark or within the six month grace period will result in the registration being cancelled.
The second most common type of refusal is a rejection based on the mark being generic in nature. To illustrate, in re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007), LAWYERS.COM was considered a generic term as the service was described as, “providing an online interactive database featuring information exchange in the fields of law, legal news and legal services”. The applicant for the registration of a mark must therefore avoid choosing a mark which is generic or common for describing the goods or services.
The affidavit is basically an affirmation that the mark is still in use in commerce. ‘Use in Commerce’ is defined by the Trademark Revision Act of 1988 as, ‘bonafide use of the mark in the ordinary course of trade and not made merely to reserve a right in a mark.’ If the mark is not in use in commerce, the affidavit must explain the reason for the non use and state that the non use is not the result of an intention to abandon the mark. Non use is excusable only if it is caused by factors beyond the registrant’s control. It must be noted that excusable non use of a registered mark does not include absence of sales due to lack of demand of the product.
The 1988 Act provides that a Section 8 Affidavit must include the same information required for a renewal of a mark, that is, a statement of use in commerce as to at least some of the goods and services described in the registration and the submissions of specimens evidencing such use (15 U.S.C §1058 a).  This refers to the condition that the affidavit must be accompanied by a specimen of the mark showing current use of the mark on the goods or services covered by the registration. A specimen is required to be submitted for each class of goods or services protected by the registration. Further, the specimens so submitted must also conform to the requirements of acceptable specimens when filing a new application of a mark, such as the acceptable pixel and resolution count etc.
It is important to remember that false statements made in a Section 8 Affidavit will constitute as fraud and this could lead to cancellation of the registration. Therefore, the specimen filed must be one that is in fact used in commerce and not created only for the sake of filing the affidavit within the deadline but in actuality has never been used on the goods and services.
A list of documents to be submitted accompanying a Section 8 Affidavit is as follows:
   
  Identification of the registration, including mark, registration number and date.
 
Recitation of use in commerce of at least some of the goods covered by the registration, or recitation of the circumstances excusing non use and absence of the intention to abandon.
  Recitation of Ownership of the Affiant.
  A specimen showing current use in commerce of the mark on a product /service covered by the registration
  Statements made in the Affidavit or Declaration Form
  Filing fee of $100 per class.
 
If filed after the sixth year but within the six month grace period, an additional fee of $100 per class must be paid.
IP Procure undertakes the responsibility to file the Section 8 Affidavit on behalf of its existing clients on receipt of the acceptable specimen and filing fee amount.

II. Section 15 – Affidavit of Incontestability

Once an application is registered, it can no longer be cancelled on the grounds of prior use or descriptiveness. However, filing an affidavit of incontestability grants an ‘incontestable’ status to the Registrant. This means that the registration becomes conclusive evidence of the Registrant’s ownership and exclusive right to use the mark and grants immunity to the mark from attacks on the basis of descriptiveness.
IP Procure continually files Section 15 Affidavits along with a Section 8 Affidavit on behalf of its clients.
The requirements for a Section 15 Affidavit to be filed are:
  Identification of the registration, including mark, registration number and date.
  Claim of Ownership
  Filing of the Section 15 Affidavit within one year of completion of the five consecutive year periods.
 
A specimen showing current use in commerce of the mark on a product /service covered by the registration
 
Absence of any final decisions adverse to the Registrant’s claim of ownership or right to register or any other pending proceedings involving these rights.
  Statements made in the Affidavit or Declaration Form.
  A filing fee of $200 per class.
It is important to note that if the mark has been used in only some goods or services covered in the registration, then only those goods and services must be specified in the statement of continuous use.
II. Section 15 – Affidavit of Incontestability
Once an application has been registered, this registration needs to be renewed every ten years after the date of registration. In order to renew the registration, the following documents need to be filed with the United States Patent and Trademark Office,
The requirements for a Section 15 Affidavit to be filed are:
 
A statement of continued use, also known as a 10 year Section 8 Affidavit mentioning the goods or services used in connection with the mark as covered in the registration. Or Showing the non use of the mark and the non use is not due to any intention to abandon the mark. The same requirements that pertain to a Section 8 Affidavit with regard to non use of a mark apply in this situation as well.
  Specimen for each class of goods or services covered by the registration.
  Filing fee of $400 per class for the application of renewal.
If the owner of the mark believes that there has been a material alteration to the mark over the 10 year period, he has the option to make a formal application to amend the mark in the registration under Section 7(e). However, this is not mandatory if no material change has been made.
Also, if the mark is no longer used on certain goods or services covered in the registration, these goods and services must be deleted on filing the statement of use affidavits and renewals. However, if the mark is used on additional goods or services, the registration cannot be amended to add these goods and services, although a new application may be filed for the same in order to update the owner’s product line.
 
 
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