Trademark Renewal, Use, and Incontestability (Maintain a Trademark Registration)

General Information

To maintain a federal trademark registration, a Declaration of (Continued) Use must be periodically filed with the USPTO. A Declaration of Use is a sworn statement that the mark is in use in commerce. 15 USC 1058(b)(1). The Declaration must be filed between the 5th and 6th years after the date of registration OR within a 6-month grace period thereafter. The Declaration must also be filed during the 1-year period prior to expiration of the mark’s term OR within a 6-month grace period after the mark expired. 15 USC 1058.

A federal trademark registration is effective for 10 years from the date of registration. 15 USC 1058(a). A federal trademark may be renewed during the 1-year period prior to expiration of its term OR within a 6-month grace period after the mark expired. 15 USC 1059(a). A renewal will extend the federal registration for an additional 10 years from the date of the expiration. The USPTO does not remind trademark holders of the need to make maintenance or renewal filings.

A Kentucky trademark registration is effective for 5 years from the date of registration. KRS 365.581(1). About 6 months prior to expiration of its term, the Trademarks Division of the Kentucky Secretary of State will mail the registrant a renewal notice. KRS 365.581(3). A renewal will extend the Kentucky registration for an additional 5 years from the date of the expiration.

A federal Declaration of Incontestability is not required to maintain registration of the federal trademark or servicemark but will help deflect legal challenges as to the mark’s validity.

Purpose/Necessity

Federal and state trademark law seek to protect business names, logos, slogans, etc. that identify the source of particular goods or services. They are only issued upon proof of actual use of the mark in the manners specified in the registration application. However, when such identifying material no longer identifies the source, an issued mark ceases to serve its intended purpose.

The trademark laws include mechanisms to remove unused marks from the trademark registries so others may make current use of similar marks. The laws allow registrations to be maintained only upon a showing of current use of the mark. This is done through mandatory declaration of use and renewal filings.

If a Declaration of Use is not filed, the federal registration will be cancelled. 37 CFR 2.160(a). If a federal trademark renewal application is not filed, the registration will expire. 37 CFR 2.182. If a Kentucky trademark renewal application is not filed, the registration will be cancelled. KRS 365.591(2).

A mark that has been cancelled or whose registration has expired loses its statutory rights. It is considered abandoned and is placed in “dead” status. Others then have the ability to register the same or a similar mark.

Though a Declaration of Incontestability is not mandatory, there are several benefits to making the filing. The registration serves as “conclusive evidence of the validity of the registered mark and of the registration of the mark, the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.” 15 USC 1115(b). This means that after the Declaration of Incontestability is filed, the mark holder gains a legal presumption as to the exclusive right to use the mark on or in connection with the goods or services listed in the registration or any updates filed with the USPTO. This makes it far more difficult for another party to challenge the mark’s registration, ownership, and right to use the mark in a cancellation proceeding. It is only available for marks filed on the Principal Register (the primary listing of federal trademarks and servicemarks).

Trademark/Servicemark Maintenance Chart

Use the following chart to determine which maintenance/renewal filings are due and when they may be made. Note: all dates are in reference to the dates of registration. If a mark was registered both federally and in Kentucky, the respective dates of registration may differ.

	Year 4.5 – 5	Year 5 – 6.5	Year 9 – 10.5	Year 9.5 – 10	Year 14.5 – 15	Year 19 – 20.5	Year 19.5 – 20
Kentucky Mark	Renewal			Renewal	Renewal		Renewal
Federal Mark		Declaration of Use	Declaration of Use AND Renewal			Declaration of Use AND Renewal
		Optional: Declaration of Incontestability (may be filed as early as 5 years after registration and any time thereafter if continuously used; need only be filed once)

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