Don’t Just Register & Forget It! Why Filing Declarations of Use Early Is Best Practice

Insights

Overview

After ten months of waiting for an examination and another 30 days for the opposition period to pass, you finally have your trademark registration! Now what?

It’s easy to set aside that certificate of registration and pay it no mind. But five years later, you will be reminded that it’s time to file a Declaration of Use! What’s that?

The U.S. Patent & Trademark Office (“USPTO”) requires owners of trademark registrations to confirm they are still using their trademarks for the registered goods and services. This Declaration must be filed between the fifth and sixth years after registration and can be filed at any time in that window.

Once the Declaration is filed, your registration will live on for the remainder of its 10-year life cycle, at which time you can renew and must re-declare your continued use of the mark. Deadlines are deadlines, but there is no need to wait to the last minute to file your Declaration of Use!

It is best practice to file as soon as practicable in the fifth to sixth-year window, and here are five reasons why.

Preserve time to resolve certain office actions. If the USPTO has questions about your Declaration of Use, which it issues via an “Office Action,” you will have six months to respond regardless of when you filed the Declaration within the fifth to sixth year window. But certain issues can only be resolved if done before the sixth-year post-registration (e.g., creating and substituting a specimen of use).
Maximize the remaining registration period. As we learned during the pandemic, life is unpredictable. Your manufacturer might close unexpectedly. Your distributor may stop carrying your products. Filing early means you lock in the next few years of registered protection regardless of unexpected interruptions to your use.
Simplify diligence. If your company is contemplating a sale of assets or unexpectedly receives a purchase offer, you want your trademark portfolio in order. If you file Declarations of Use early, there will be fewer questions during diligence about whether those are being filed and when to file them before closing.
Avoid additional and unwanted costs. Inflation is undefeated. The cost of anything can go up over time, including trademark filings. Whether it is your attorney’s fees for preparing the Declaration of Use or the USPTO’s fee for filing, there is a chance those costs increase the longer you wait. So, the sooner you file, the more cost certainty you have.
Reduce stress. Technical issues can easily ruin deadlines if you wait to the last minute. Filing early means less worry about the unexpected at the last minute. It also means fewer reminder emails from your attorney.