Business Owners Beware

If you have a registered trademark or service mark with the United States Patent and Trademark Office, then it is very likely that you have received or will receive an official-looking document with the bold caption "Trademark or Service Mark Cancellation Alert." The document, which contains official-looking numbers, goes on to threaten that the recipient’s trademark or service mark will be cancelled unless that party complies with the requirements set forth in the document.

While the form appears to be from the U. S. government, it is, in fact, noted in small print toward the end of the text that it is actually a solicitation from a private company that wishes to have the recipient hire it for the purpose of renewing the identified trademark registration or filing the appropriate affidavit in a timely fashion. It is likely that this company searches the Patent and Trademark Office’s trademark database in order to determine when affidavits of continued use or renewals are due, and the threatening alert is mailed to the trademark owners. The amount of money requested for the promised service is substantial and far in excess of the amount a client would have to pay for comparable work by a skilled trademark attorney.

The U.S. Patent and Trademark Office does not send formal notice of the date when an affidavit of continued use of a trademark or service mark is to be filed. Similarly, that office does not notify owners that trademark or service mark renewals must be made. It is incumbent upon each owner of a U.S.-registered mark to calendar the appropriate dates to file the necessary documents in a timely fashion, though responsible trademark lawyers will customarily docket the appropriate dates and will advise their clients of the necessity of complying with required filings. The consequences of failing to make a timely filing or omitting to file a document required by U.S. federal statute is that the registration will be cancelled, though the owner will still have trademark rights under the common law.

It is, in fact, possible to reregister a mark with the Trademark Office once it has been cancelled for failure to file the appropriate affidavit of use or renewal. Unfortunately, the cost of reregistering is higher than the cost of filing the renewal forms, and some of the benefits of registration may be either delayed or lost.

When a trademark or service mark is registered with the U.S. Trademark Office, after the mark has been in use for five years and before the end of the sixth year, the owner of that mark must file an affidavit or declaration stating that the mark is actually being used. The purpose of requiring this filing is so that the Trademark Office can clear the registry of marks which are no longer being actively used in commerce by their owners.

At the same time as the affidavit of continued use is filed, the owner of the mark may file an additional form stating that there has been no litigation or administrative proceeding against the mark owner alleging that the claimant has a better right to the trademark or service mark than the record owner. When this form is accepted by the Trademark Office, most irregularities in the initial ownership or registration of the mark will be extinguished and the mark will become incontestable. Trademark or service marks enjoying incontestable status will then be immune from the possibility of having the vast majority of claimants petition for cancellation of the mark for most purposes.

A U.S. trademark registration is good for ten years. It must be renewed after the end of the ninth year and before the tenth-year registration anniversary. Marks may be renewed every ten years for so long as the owner desires to do so and is still using the mark.

Every state in the United States has its own trademark registry. Protection for state trademarks is limited by the geographic boundaries of the state, and the remedies afforded by the state trademark laws may differ from those available under the federal statutes. Case law makes it clear that federally-registered trademarks and service marks will displace inconsistent state registrations.

Most states follow rules similar to the federal Trademark Office with respect to notification of renewals. The administrators of the state trademark registries expect the owners of state marks to keep track of appropriate dates and make appropriate filings when necessary. Notification is rarely, if ever, given that a mark’s registration is about to lapse or that some other document must be filed with respect to the state-registered mark.

There are certain requirements with respect to filings for the purpose of clearing unused marks from the registries and renewing the registrations. The burden of filing the required documents in a timely fashion is typically placed on the mark owners. Most lawyers specializing in intellectual property have sophisticated docketing systems for the purpose of calendaring the appropriate dates. Generally, if the attorney is kept advised as to the address and contact information for communicating with a client with respect to that client’s mark, then every effort will usually be made to do so.