Obtaining trademark registration protection in the United States is important both to prevent others from copying your brand and to prevent you from being sued for trademark infringement. For these two reasons, sales platforms like Amazon may require you to obtain a trademark registration or -at the very least- to apply for a trademark registration before listing your products on their sites.
Your work is not over after obtaining a trademark registration. You need to perform periodic maintenance to ensure that the trademark registration remains valid. This maintenance is done by renewing the registration. Although technically trademark registrations do not have a specific validity period, the survival of the registration is conditional. This condition is the use of the registered brand in commerce as registered and proof of this use.
Trademark registration renewals are made with a proof of use application to the United States Patent and Trademark Office (shortly known as “USPTO”). Since this application is made with a sworn declaration, it is important that the content of the declaration is true. For domestic trademark registrations, proof of use declarations must be submitted between the 5th and 6th anniversaries from the registration date. If the use declaration is accepted by the USPTO, the trademark registration remains valid until the end of the 10th year. To ensure that the registration remains valid beyond the 10th year, a declaration of use must be submitted again between the 9th and 10th anniversaries.
If you have obtained the US trademark registration not domestically but through WIPO (World Intellectual Property Organization) based on the Madrid Protocol, the renewal procedure for this registration (which is called “extension of protection”) will be different. Such registrations or applications are called 66(a) registrations or applications. 66(a) registrations, just like domestic registrations, must be renewed on the 6th and 9th anniversaries by submitting a declaration of use. If there are products and services in the registration that you do not use in the US, it is useful to delete them during the registration renewal. The USPTO has been conducting random audits to make sure that the products and services listed in trademark registrations are used in commerce.
