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The trademark register in the United States is a use-based register. Registrations are entitled to be maintained only for goods or services for which the mark is in use in commerce or for which temporary nonuse is excused due to special circumstances. Inaccurate or improper use claims in registration maintenance filings jeopardize the validity of your registration, may unnecessarily block future applications, and diminish the utility of the trademark register to provide notice of trademark rights to businesses and the public.
To incentivize accuracy, in the schedule of fees effective January 2, 2021, the USPTO implemented a fee for requests to delete goods, services, or classes from a registration during the examination of your maintenance filing or during an audit. The fee is $250 per class for documents filed electronically through TEAS, or $350 per class for permitted paper filings. This new fee must be paid each time a registration owner requests or is required to delete an entire class or specific items in a class prior to acceptance of the Section 8 or 71 declaration, even if the Section 8 or 71 declaration was filed before January 2, 2021. Please be aware that failure to pay the deletion fee, if required in a maintenance-related office action, will result in the cancellation of your entire registration.
How to avoid incurring the fee
- If you’re not using your trademark for some of the listed goods or services, file a section 7 request as soon as possible and before the next maintenance filing is due, unless the reason for temporary nonuse is due to circumstances not within your control.
- File accurate section 8 and 71 declarations that reflect your current trademark use by deleting goods or services if you're not using your trademark with them or by providing facts in the declaration explaining that their temporary nonuse should be excused.
Best practices
Consider using these best practices, especially leading up to filing deadlines for section 8 and 71 declarations:
- Create checklists to follow when evaluating and confirming use of the trademark in commerce with registered goods and services. List each good and service on a separate line. Copying and pasting these from the TSDR record will ensure you don’t miss any.
- Keep notes regarding the people and records consulted (and when you did so).
- Keep a record of evidence of current use in commerce, such as photos of each good bearing the trademark, printouts of supporting webpages (with the URL and date of printing), and copies of print advertising or promotional materials.
For more information, see the Summary of FY2021 Final Trademark Fee Rule and Keeping your registration alive webpages on the USPTO website.
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