Keeping your registration alive

A US registration does not simply last for a term of years. It stays in force only if the owner files sworn statements of continued use at fixed times. If you miss one, the registration is cancelled even though the mark is still in use. Your rights from actual use survive, but the benefits of registration do not. The deadlines run from the registration date printed on your certificate. Fees below are from the USPTO fee schedule, electronic filing, per class.

The required filings

Madrid registrations are renewed through WIPO, not the USPTO (37 C.F.R. §7.41), but the Section 71 declaration is filed with the USPTO. See Madrid designations into the US.

Each declaration states that the mark is in use in commerce for the listed goods and services, and must include a specimen for each class (see specimens that work). The declaration must be true for every item listed. Delete what you no longer sell before you file. Deleting goods before filing a Section 8 or 71 declaration is free. Deleting them after filing, before the declaration is accepted, costs $250 per class (37 C.F.R. §2.6(a)(12)(iv); §7.6(a)(6)(iii)).

The optional filing: Section 15

After five consecutive years of continuous use following registration, you may file a Section 15 declaration of incontestability, within one year after any such five-year period ($250 per class; 15 U.S.C. §1065). It is often combined with the first Section 8 ($575 per class). "Incontestable" status limits the grounds on which others can challenge the registration. For example, it can no longer be cancelled as merely descriptive. It does not protect a registration that becomes generic or was obtained by fraud. You cannot file it while a proceeding involving your rights is pending, or if there has been a final decision adverse to your claim of ownership.

Audits

The USPTO audits a sample of registrations when their Section 8 or 71 declarations are filed (post registration audit program; 37 C.F.R. §2.161(b), §7.37(b)). A registration is eligible for a random audit if it has at least one class with four or more goods or services, or at least two classes with two or more each. The USPTO also directs audits where a file raises concerns, such as a specimen that appears digitally altered. An audit Office action asks for proof of use for additional listed items, usually two more per audited class. You then have six months from the Office action, or until the end of the filing window if that is later, to provide proof or delete items (37 C.F.R. §2.163(b)). Deletions at that stage cost $250 per class (37 C.F.R. §2.6(a)(12)(iv)), and a $100 deficiency surcharge may apply (§2.6(a)(20)(ii)).

Audits find a lot. The USPTO reports that the program has led it to cancel or remove goods or services in "more than fifty percent of audited registrations." The simplest protection is a declaration that lists only what you actually sell.

Other ways registrations are lost

• Abandonment. Nonuse for three consecutive years is prima facie evidence that a mark has been abandoned (15 U.S.C. §1127). That is a ground to cancel at any time (§1064(3)).
• Expungement and reexamination. Anyone may ask the USPTO to remove goods or services for which a mark has never been used (expungement, generally between the 3rd and 10th year after registration; 15 U.S.C. §1066a). They may also ask it to examine whether the mark was in use on the relevant date (reexamination; §1066b). The petition fee is $400 per class.
• Genericness. A mark that becomes the common name of the product can be cancelled at any time (§1064(3)).

Keep the record current

Record changes of ownership with the USPTO's Assignment Recordation Branch ($40 for the first mark per document; 37 C.F.R. §2.6(b)(6)). Keep the owner's email and correspondence address current. Reminders and Office actions go only to the address of record.

Expect unsolicited "renewal" offers around these dates. Many look official, and some charge for filings that are not due or at fees the USPTO does not charge. The USPTO's fees are only those on its fee schedule, and its emails come from @uspto.gov. See spotting trademark scams.

When an attorney earns their fee

The first Section 8 for a single-class registration you use exactly as listed is routine. An attorney earns the fee in an audit, when use has stopped for some goods and an excusable-nonuse claim is in question, after a change of ownership or a corporate restructuring, and for portfolios with many classes and deadlines.

This guide is general information, not legal advice. Check the deadline for your registration in TSDR.