Owning a trademark is like owning a car, you have to update the registration from time to time. If you don’t update your trademark registration at the right time, you can lose the rights and federal protection guaranteed by owning the trademark.
The first document you need to file is known as the Section 8 declaration, and it needs to be filed between the 5th and 6th year anniversary of the original registration. To file the Section 8 you’ll need three things: the declaration form stating the mark has been in use for the past five years, a $100 filing fee, and a specimen that proves use of the mark.
When you file the Section 8 form there’s an optional form that we as Arizona trademark lawyers highly recommend. A Section 15 declaration will make your trademark incontestable. This means the mark can not be legally challenged. Of course there are exceptions to this legal immunity so it really means that it’s a lot harder to challenge. In order to get approved for a Section 15 you’ll need to prove:
• No final legal decisions have been issued in regard to the trademark
• No challenges to the trademark are pending
• The mark is not generic
Once the Section 8 and/or 15 forms are taken care of you won’t have to worry about registration for another four years. Between the 9th and 10th registration anniversary you’ll need to file a Section 9 and another Section 8 declaration. Filing the Section 8 is the same process as last time so it should be easy. The Section 9 request for renewal only requires a Section 9 form and a filing fee.
The good people at the US Patent Office put this video together to clarify any trademark questions. It’s a little cheesy, but it’s good information.
If you have any questions about getting trademark registration or what to do after getting approved for registration call the trademark lawyers at Parsons & Goltry.
"Our company has worked with a number of patent attorneys and were so pleased when we began working with Parsons & Goltry nearly a decade ago. Mike Goltry's knowledge and attention to detail has enabled us to have numerous products patented and trademarks registered. We highly recommend this Law Firm."
"Michael Goltry is the most professional, honest and effective patent attorney whom I ever met in my 40 year professional engineering career. I started to work with him over 20 years ago and plan to work indefinitely."
"Mr. Goltry took a provisional patent that we'd filed ourselves, and quickly and professionally turned our innovation into U.S. and foreign applications. His [patent claims] were a thing of beauty, and I was amazed by how deftly he countered the inevitable office actions. His language held up, and the U.S. Patent just issued. He was easy and efficient to work with, and his fees were remarkably reasonable. We're not planning to go anywhere else, ever."
"I applied for a patent through Parsons & Goltry. After being on the docket for 2 years at the USPTO, I received notification that my patent request had been denied. Michael Goltry contacted me immediately to review my options. After I informed him of my decision to move forward, he filed a response to the USPTO. In his response he got the examiner to fully understand the claims in the patent application and the "denied" decision was reversed. I was able to secure and receive a "patent granted" decision. Thank you, Michael Goltry."
10643 North Frank Lloyd
Wright Blvd. Suite 201
Scottsdale, AZ 85259
Phone: (480) 991-3435
Our office is located in Scottsdale, Arizona, but we service clients throughout the United States and Internationally.