At the close of negotiations for a client’s licensing deal or before an infringement trial is about to begin, you do not want to learn that the trademark registration or patent involved is abandoned or expired at the United States Patent and Trademark Office (USPTO). Trademark registrations and patents require filings and fees to be made to remain active and enforceable. The USPTO does not send reminders for these things.
Fortunately, the key date to know is the date that the trademark registration was granted or the patent issued as deadlines as filings are determined from that date. To avoid, at best, embarrassment, and, at worst, malpractice claims, when that trademark registration or issued patent arrives from the USPTO, find the grant or issue date printed on the face of the document, begin counting, and enter these dates in your calendar or docketing system.
The first filing required to keep a trademark registration active is a Section 8 Declaration of Use or Excusable Nonuse. This filing must be made between the fifth and sixth years after the registration date. If no filing is made, the registration for that trademark will go abandoned. The Section 8 filing includes a declaration by the registrant or representative that the trademark is in use with all the goods or services on the registration, a specimen showing the trademark used with the goods or services, and fee. If the trademark is not in use with all the goods or services listed on the registration, the goods or services not used must be deleted or an excusable reason for nonuse provided.
A Section 15 Declaration of Incontestability is a filing that can be made when a registered trademark has been in continuous use in commerce for at least five consecutive years after the registration date, no final adverse decision of the registrant’s claim of ownership made, and no proceeding challenging the owner’s rights in the trademark is pending. As the earliest date for the Section 15 filing coincides with the Section 8 filing, the two are often made together. While not required, a Section 15 filing is recommended because it acts as evidence of the validity of the registered trademark and registration certificate and the registrant’s exclusive rights to use the trademark with the goods or services on the registration.
The second filing required is a Section 9 Application for Renewal. This filing must be made between the ninth and tenth years after the registration date and is filed with another Section 8 filing. The term of a trademark registration is ten years, and Section 8 and 9 filings will continue to be due every ten years from the registration date.
If the deadlines to file the Section 8 or 9 filings are missed, these filings may still be made in a six-month grace period with a surcharge. If the six-month grace period is missed, a new application to register the trademark can be filed, but the registrant will not be able to claim the earlier registration date on the abandoned registration.
For utility patents, maintenance fees must be paid three times over its twenty-year term. (No maintenance fees are due for design and plant patents.) The first fee is due three and a half years from the issue date, the second fee is due seven and a half years from the issue date, and the third fee is due by eleven and a half years from the issue date. The fees may still be paid in a six-month grace period from each of those deadlines with a surcharge, or four years for the first fee, eight years for the second fee, and twelve years for the third fee. If a maintenance fee is not paid by the end of the grace period, the patent will expire.
After the six-month grace period, the USPTO may still permit payment of a late maintenance fee to “revive” the expired patent. An “unintentional” late payment will be accepted if that missed payment and a petition fee are filed. The USPTO may require additional information if there is a question whether the delay was unintentional. (Before a rule change in December 2013, a patentee had twenty-four months after the end of the grace period to revive for an “unintentional” late payment, and after that time period, a patentee had a higher burden to have a missed payment accepted by showing an “unavoidable” delay. Those requirements are no longer in the current rule.) A “revived” patent does have some limitations: the patentee who revives an expired patent may not be able to assert that patent against a competitor who began selling the formerly patented product during the period that patent was expired.