Registering a trademark in the United States is just the first step in the process of your brand’s protection. If you are interested in details of filing a trademark application, visit the article: Trademark Registration: Insights from a Trademark Attorney. To ensure the effective protection of your brand, it is essential to adhere to all procedural requirements, file the necessary documentation, and understand the relevant filing deadlines.
This article provides a comprehensive overview of the key trademark deadlines to be aware of regarding trademark registration and maintenance.
Opposition Period
The opposition period is a 30-day period beginning on the date of publication of the trademark application in the Trademark Official Gazette. Additionally, the deadline can be extended for 30, 60, or 90 days upon request. However, it should be noted that these extensions are subject to USPTO requirements. For instance, the 60-day extension requires the presence of a good cause.
Office Action Response
In case you receive an Office Action, you have 3 months to respond for direct U.S. filings and 6 months for trademark applications designated in the U.S. that are filed under the Madrid Protocol. The one-time deadline extension of 3 months is available for direct filings, however, there is no extension option for applications via the Madrid Protocol.
Statement of Use
After filing an application on the intent-to-use basis, you must also file a Statement of Use (Section 1(b)). You have 6 months from the date of issuance of the Notice of Allowance to file this statement. If the extension is required, it can be provided up to 5 times, for a total duration of 36 months.
Declaration of Use
According to the trademark maintenance process, after the 5th and 6th year, it is necessary to file a Declaration of Use (Section 8). This filing confirms the use of your trademark in U.S. commerce. In the event that the deadline is missed, an extension may be granted for a period of 6 months at an additional fee.
Declaration of Incontestability
After five years of continuous and lawful use of the trademark in commerce, a Declaration of Incontestability may be filed. While it is not mandatory, it is highly recommended, as such a declaration grants the trademark the “incontestible” status, meaning stronger protection against cancellation on the basis of descriptiveness or prior use. It can be filed along with the Section 8 Declaration, as previously outlined.
You might also be interested: The Power of Incontestability: Strengthening Your U.S. Trademark
Affirmation of Continued Use
For registrations via the Madrid Protocol there is a requirement to file Affirmation of Continued Use, which is due between 5th and 6th years from the date of registration in the U.S. In case that the deadline is missed, a 6 month grace period may be granted for an extra fee.
Declaration of Use & Renewal
Finally, every 10 years, with the initial filing required between the 9th and 10th year, it is necessary to file the Declaration of Use & Renewal (Combined Sections 8 & 9). In the event that the deadline is not met, grace period may be granted for a period of 6 months at an additional fee.
If you need detailed legal advice on filings and trademark maintenance, contact Ortynska Law at [email protected] or by phone at 9147035632.