Trademark Maintenance

A trademark owner must maintain a trademark by continuing to use the trademark in commerce and by filing for Continued Use or Excusable Nonuse (between 5-6 years) and Renewal  (before 10 year term is over).

After 5 years of continued use of a trademark on the Principal Register and the filing of a §15 Declaration, the mark becomes incontestable. This showing of incontestability is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner's ownership of the mark and of the owner's exclusive right to use the mark with the goods/services. The §15 Declaration is not required unless incontestability is desired. The declaration must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce.

The USPTO is now sending out email reminders for trademark maintenance fees due.

The USPTO has begun sending courtesy e-mail reminders of upcoming post-registration maintenance filing deadlines for §§8 and 71 declarations and §9 renewals to registration owners who (1) provided a valid e-mail address to the USPTO; (2) authorized e-mail communication; and (3) have “live” registrations on the date of sending. The courtesy e-mail reminders will be sent on the first day of the statutory filing period for the maintenance filing (e.g., 5th year anniversary date, 9th year anniversary date, 19th year anniversary date, etc.) to all e-mail addresses of record within the Correspondence and Current Owner(s) Information fields, as indicated in Office records. No reminders will be sent by regular mail, and no follow-up e-mails will be attempted for undeliverable e-mails.

To ensure receipt of the courtesy email reminders, registration owners should add the USPTO to their “safe senders list” and/or confirm that their email server will accept email from the USPTO and will not treat it as junk mail or spam.  Any failure by the USPTO to provide the courtesy email reminders or any non-receipt of such reminders will not excuse a registration owner who fails to meet its statutory obligations.

Eligibility and Targeted Recipients

The courtesy email reminders will be sent on the first day of the statutory filing period for the maintenance filing (e.g., 5th year anniversary date, 9th year anniversary date, 19th year anniversary date, etc.) to all email addresses of record within the Correspondence and Current Owner(s) Information fields, as indicated in Office records, even if email was only authorized for one of the fields.  For example, if email was authorized in the Correspondence Information field but not in the Current Owner(s) Information field, the reminders will be sent to email addresses in both the Correspondence and Current Owner(s) Information fields.

The reminders will be sent to both primary and secondary email addresses.  If an email address is duplicated (for example, within the Correspondence and Current Owner(s) Information fields), only one notice will be sent to that email address.  

Registration owners should use the USPTO’s Trademark Electronic Application System (“TEAS”) Change of Correspondence Address and Change of Owner’s Address Forms to verify, update, add, or delete email address information, as necessary, to ensure receipt of the reminders by the registration owner(s) and any legal representative that elect to receive them.  The USPTO encourages owners and/or their attorneys to promptly make any necessary changes to email address(es) in the Trademark Database.

Information Communicated in the Courtesy Reminders

The courtesy email reminders will identify the registered mark, corresponding serial and registration numbers, the date of registration, and the owner(s) of record in the USPTO’s Trademark database.  The reminders will also identify the maintenance filing currently due (e.g., Section 8 declaration, Section 71 declaration, or Section 8 declaration and Section 9 renewal application), along with the anniversary filing deadline, the grace period deadline, and the filing fee per class.

The courtesy email reminders will provide links to the USPTO website for general information on registration maintenance requirements, as well as direct links to TEAS, the Trademark Status & Document Retrieval (“TSDR”) database, and the Electronic Trademark Assignment System (“ETAS”).

Opting Out of Receiving the Courtesy Email Reminders

If registration owners or their attorneys do not wish to receive the courtesy email reminders, they should delete their email addresses from the USPTO’s Trademark Database using the TEAS Change of Correspondence Address and Change of Owner’s Address Forms.

If legal representation prior to registration will not be ongoing, the TEAS Change of Correspondence Address and Change of Owner’s Address Forms should be used to remove any attorney email address(es) from the USPTO’s Trademark database and to provide the email address(es) of the registration owner(s), so that the USPTO can send the courtesy email reminder directly to the registration owner(s).

Trademark Enforcement-Working with U.S. Customs to Enforce Intellectual Property Rights

The USPTO does not enforce a trademark owner’s civil rights to a trademark. It is up to the owner of a mark to monitor other’s use of their mark and protect their own rights through civil or criminal proceedings. An owner has a duty to monitor infringing use of its trademarks and should enforce these rights by using cease and desist letters, licensing agreements, consent agreements, and litigation (depending on the facts) if the infringements do not cease. If the infringer’s use qualifies as counterfeit use of the mark, criminal charges may be brought. If a trademark owner does not police use of the mark and stop infringers, the infringers may be able to have the mark canceled through a cancellation procedure. A trademark loses its strength and can lose enforceability if the owner does not control its exclusive use.

A registered trademark owner does has the right to have the FBI investigate and potentially bring criminal charges against traffickers in counterfeits for marks registered on the Principal Register. See 18 USC 2320 for more information.

The U.S. Customs and Border Protection (CBP) allows recordation of trademarks on the Principal Register, trade names (that are NOT trademarks) and registered copyrights. These rights are enforced under 19 CFR 133.1-19 CFR 133.44.

19 CFR § 133.1 Recordation of trademarks. (a) Eligible trademarks. Trademarks registered by the U.S. Patent and Trademark Office under the Trademark Act of March 3, 1881, the Trademark Act of February 20, 1905, or the Trademark Act of 1946 [the Principal Register] (15 U.S.C. 1051 et seq.) except those registered on the supplemental register under the 1946 Act (15 U.S.C. 1096), may be recorded with the U.S. Customs Service if the registration is current.

19 CFR § 133.31 Recordation of copyrighted works. (a) Eligible works. Claims to copyright which have been registered in accordance with the Copyright Act of July 30, 1947, as amended, or the Copyright Act of 1976, as amended, may be recorded with Customs for import protection.

Different CBP rules apply for different types of importations with protection available for:

Counterfeit Trademarks (19 CFR § 133.21)-are a spurious trademark that is identical to, or substantially indistinguishable from, a registered trademark;

Copying or Simulating Trademarks or Trade Names (19 CFR § 133.22)-one which may so resemble a recorded mark or name as to be likely to cause the public to associate the copying or simulating mark or name with the recorded mark or name; and

Restricted Gray Mark Articles (19 CFR § 133.23)-are foreign-made articles bearing a genuine trademark or trade name identical with or substantially indistinguishable from one owned and recorded by a citizen of the United States or a corporation or association created or organized with the U.S. and imported without authorization of the U.S. Owner.

Infringing copies or phonorecords (19 CFR § 133.42)-are “piratical” articles, i.e., copies of phonorecords which are unlawfully made (without the authorization of the copyright owner).

Customs provides recordation and border protection against counterfeits and pirated goods for U.S. registered trademarks (on the Principal Register) that are enforced through criminal sanctions such as seizure, denial of entry into the U.S., and civil fines. See Register with U.S. Customs for more information.

A trademark owner with a trademark on the Principal Register may also seek protection through exclusion orders from the International Trade Commission (ITC) barring the products at issue from entry into the United States, as well as a cease and desist order directing the violating parties to cease certain actions under Section 337 of the Tariff Act of 1930 (19 U.S.C. 1337). Monetary damages are not available through the ITC.

“Section 337 specifically declares the infringement of the following statutory rights to be unlawful import practices: a U.S. patent or a U.S. copyright registered under Title 17, [ and] a registered trademark . . . In cases involving infringement of these intellectual property rights, there is no injury requirement.” (Source: U.S. International Trade Commission Answers to Frequency Asked Questions.)

The elements of a Section 337 violation are:

(1) an unfair act or unfair method of competition (e.g., patent infringement);

(2) an importation, sale for importation or sale after importation of the accused product;

(3) a domestic industry; and

(4) injury resulting from the unfair act if the copyright or trademark is not federally registered. [As noted above, there is no injury requirement for a U.S. Patent, U.S. Registered copyright or U.S. Registered Trademark.]

Protection of a Domain Name

Remedies available to a trademark owner who has been infringed

Domain name registrants that have distinctive names or famous names should monitor use of their names by others on the internet and in other commercial use for infringement, counterfeiting or piracy. Remedies and injunctions are available for those who have trademarks on the Principal Register of the USPTO against those who violate U.S. Trademark Law. State remedies may be available to those who have unregistered trademarks or domain names.

Trademark registrants of a mark registered in the USPTO whose rights have been civilly infringed may be entitled to injunctions (stop the use of the infringing name, goods or services), the plaintiff may also be entitled to recover defendant’s profits, any damages sustained by the plaintiff (up to 3 times damages under some circumstances), and the costs of the action. The court in exceptional cases may award reasonable attorney fees to the prevailing party.

Violation of the Anticybersquatting Consumer Protection Act (domain names) may lead to a court taking action against the domain name registrant with the following consequences: forfeiture, cancellation, or transfer of a domain name to the owner of the mark and other remedies including injunctive relief, recovery of defendant's profits, actual damages, and costs, and statutory damages (in cybersquatting cases), in an amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.

Remedies for trademark owners who have been infringed through domain name registrations and use are also available through Domain Name Dispute Resolution at the World Intellectual Property Organization and other organizations. See for more information.

Report a Fake--If you have been the victim of counterfeiters or modern-day pirates and your trademarks are recorded with the USPTO and recorded with the CBP, or if you suspect a company is making or selling counterfeit goods, please contact the U.S. Department of Homeland Security's U.S. Immigration and Customs Enforcement (ICE) Office at 1-866-999-HALT. A complaint form is found online at

Not Just Patents®

Aim Higher® Facts Matter

Not Just Patents® LLC

PO Box 18716

Minneapolis, MN 55418


Call 1-651-500-7590 or email for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

For more information from Not Just Patents, see our other sites:      

Evolved Means, Method or Format-Is your trademark registration obsolete?

Trademark e Search    Strong Trademark     Enforcing Trade Names

Common Law Trademarks  Trademark Goodwill   Abandoned Trademarks

Chart of Patent vs. Trade Secret

Patent or Trademark Assignments

Trademark Disclaimers   Trademark Dilution     TSDR Status Descriptors

Oppose or Cancel? Examples of Disclaimers  Business Cease and Desist

Patent, Trademark & Copyright Inventory Forms

USPTO Search Method for Likelihood of Confusion

Verify a Trademark  Be First To File    How to Trademark Search

Are You a Content Provider-How to Pick an ID  Specimens: webpages

How to Keep A Trade Secret

Decrease Your Vulnerability to Cancellation

Using Slogans (Taglines), Model Numbers as Trademarks

Which format? When Should I  Use Standard Characters?

Opposition Pleadings    UDRP Elements    

Oppositions-The Underdog    Misc Changes to TTAB Rules 2017

How To Answer A Trademark Cease and Desist Letter

Trademark Integrity: Are your IP Assets Vulnerable?

Trademark Refusals    Does not Function as a Mark Refusals

Insurance Extension  Advantages of ®

How to Respond to Office Actions  Final Refusal

What is a Compact Patent Prosecution?

Acceptable Specimen       Supplemental Register   $224 Statement of Use

How To Show Acquired Distinctiveness Under 2(f)

Trademark-Request for Reconsideration

Why Not Just Patents? Functional Trademarks   How to Trademark     

What Does ‘Use in Commerce’ Mean?    

Grounds for Opposition & Cancellation     Cease and Desist Letter

Trademark Incontestability  TTAB Manual (TBMP)

Valid/Invalid Use of Trademarks     Trademark Searching

TTAB/TBMP Discovery Conferences & Stipulations

TBMP 113 TTAB Document Service  TBMP 309 Standing

Examples and General Rules for Likelihood of Confusion

Examples of Refusals for Likelihood of Confusion   DuPont Factors

What are Dead or Abandoned Trademarks?

 Can I Use An Abandoned Trademark?

Color as Trade Dress  3D Marks as Trade Dress  

Can I Abandon a Trademark During An Opposition?

Differences between TEAS, TEAS RF and TEAS plus  

Extension of Time to Oppose?

Ornamental Refusal  Standard TTAB Protective Order

SCAM Letters Surname Refusal

What Does Published for Opposition Mean?

What to Discuss in the Discovery Conference

Descriptive Trademarks  

Likelihood of Confusion 2d  TMOG Trademark Tuesday

Acquired Distinctiveness  2(f) or 2(f) in part

Merely Descriptive Trademarks  

Merely Descriptive Refusals

ID of Goods and Services see also Headings (list) of International Trademark Classes

Register a Trademark-Step by Step  

Protect Business Goodwill Extension of Time to Oppose

Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests

Pseudo Marks    How to Reply to Cease and Desist Letter

Not Just Patents Often Represents the Underdog

 Overcome Merely Descriptive Refusal   Overcome Likelihood Confusion

Protecting Trademark Rights (Common Law)

Steps in a Trademark Opposition Process   

Section 2(d) Refusals

Zombie Trademark  

What is the Difference between Principal & Supplemental Register?

Typical Brand Name Refusals  What is a Family of Marks? What If Someone Files An Opposition Against My Trademark?

How to Respond Office Actions  

DIY Overcoming Descriptive Refusals

Trademark Steps Trademark Registration Answers TESS  

Trademark Searching Using TESS  Trademark Search Tips

Trademark Clearance Search   DIY Trademark Strategies

Published for Opposition     What is Discoverable in a TTAB Proceeding?

Counterclaims and Affirmative Defenses

©2008-2018 All Rights Reserved. Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418.

Call: 1-651-500-7590 or email: This site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Past performance is no guarantee of future results. Privacy Policy Contact Us