Oct 30 | 2014

Small Change at the U.S. Patent and Trademark Office, Big Benefits for Trademark Owners

Recently, in a substantial departure from previous practice, the U.S. Patent and Trademark Office (the “USPTO”) announced that it will begin sending email reminders of upcoming deadlines to trademark holders for maintaining their federal trademark registrations. The change, although relatively simple, represents an important benefit for trademark holders because of an often overlooked aspect of trademark registration: registration maintenance.

A federal trademark registration essentially grants its owner nationwide protections for a renewable period of ten years; however, if an owner does not file the right documents at the right times during this ten-year period, the USPTO will cancel the registration. Unfortunately, the deadlines for the required filings do not arise until between the fifth and sixth years and between the ninth and tenth years after the registration issues, so trademark owners are susceptible to overlooking these deadlines, and therefore, lose valuable trademark rights.

The USPTO is not required by law to issue reminders to trademark registrants and, in the past, declined to voluntarily do so. The change in policy, however, will likely prove a boon to trademark registrants who are unrepresented by counsel. While intellectual property law firms have long employed various systems to provide timely reminders of important USPTO deadlines to keep their clients fully informed, unrepresented trademark registrants often are unfamiliar with USPTO procedures, or may simply forget that a trademark registration must be maintained at the USPTO. The consequences of delayed filings may include additional fees or even the loss of all federal trademark rights ‑‑ a huge blow to small businesses that have invested years building strong brands and valuable name recognition.

Covered deadlines include the § 8 Declaration of Continued Use, the § 9 Renewal Application, and the § 71 Declaration of Continued Use (for Madrid Protocol Registrants). Although these deadlines are particularly important because they are mandatory to secure continued registration, the USPTO will not send reminders for all post-registration events. For example, trademark registrants will not be sent a reminder when their marks become eligible to apply for “incontestable” status, which renders the marks immune to legal challenge on certain grounds.

Trademark practitioners should also take note that the reminders will be sent to all email addresses of record with the USPTO. Accordingly, practitioners should be sure to update their records and practices ‑‑ particularly regarding cases where they no longer represent the registrant ‑‑ before the changes take effect in late January 2015. Additional information about the reminders, including how to opt out of receiving reminders can be found at http://www.uspto.gov/trademarks/notices/reminder_maintenance_filings.jsp.

By Robert N. Hunziker, Jr., Esq.