Trademark Maintenance and Trademark Enforcement: From Renewals to the Trademark Opposition Process and Trademark cancellation Proceedings

Overview

Trademark Section 8 Declaration of Use and Section 9 Renewal

Customs and Amazon Registry

Baroody Law provides several services to help you maintain your registered trademark with the USPTO after it has passed the thirty-day period of opposition. From filing an allegation of use to helping file a declaration of continued use (section 8) and renewal (section 9), Baroody Law can help regarding the maintenance of your trademark registration in numerous ways.

If your trademark application was filed with a 1(b) intent to use status, you will be issued a notice of allowances and be required to provide an allegation of use within six months after the date listed in the notice. Baroody Law can help you with the allegation of use and in ensuring the specimens submitted with the allegation of use to prove use in commerce are appropriate to meet USPTO specifications.

Between the 5th and 6th year of your trademark registration is the time to file your section 8 declaration of use. If you do not file the declaration and you miss the grace period extended for six months with an additional uspto filing fee, your trademark registration will be cancelled. The same is true for failure to renew under Section 9 and filing the combined section 8 and section 9 form between the 9th and 10th year of registration. Baroody Law can help make sure the appropriate maintenance documents are completed so that your trademark registration stays active.

While trademark cease and desist letters are often at the top of clients' minds when enforcing their rights under a trademark registration, it is also important to consider the possibility of filing a trademark opposition or trademark cancellation with the Trademark Trial and Appeal Board. If someone is registering a similar trademark or has received registration for a similar trademark or a trademark that may result in the dilution of your brand, this may be a great remedy. Baroody Law can discuss available options if you believe trademark infringement is currently occurring.

In the event you also want to ensure infringing products do not enter the US, Baroody Law can assist with the US Customs Registration process and can help if enforcement is needed. Additionally, guiding clients through the amazon brand registry process is another way to  eliminate infringing and diluting trademarks to an existing trademark registration.

 

To learn more about trademark mainteanance and enforcement, please review the Baroody Law FAQs page.