Answer ... The initial term of a US federal registration is 10 years, but the registrant must submit to the US Patent and Trademark Office (USPTO) proof of use of the mark in US commerce for all goods and services identified in the registration between the fifth and sixth anniversaries of registration or the USPTO will cancel the registration (Section 8 of the Lanham Act, 15 USC §1058). If the mark has been in continuous, substantially exclusive use for five years from registration, the registrant may also submit a declaration of incontestability under Section 15 of the Lanham Act (15 USC §1065), which thereby limits the defences that may be asserted against the registration.

If the trademark owner is not using the mark in US commerce for all goods or services identified in the registration as of before the maintenance or renewal date, the trademark owner should delete from the registration those items for which the mark is not in use before submitting the affidavit. Otherwise, the registration could be challenged on the ground of filing a false use affidavit. If the trademark owner is unable to make use of the mark for excusable reasons (eg, if a key component must be imported from a country that is under a boycott or suffering internal strife, or if a key factory was destroyed and is being repaired), it may submit a declaration of excusable non-use.

Answer ... The trademark owner must submit an affidavit verifying that it is using the mark in the ordinary course of trade in US commerce for all goods and services identified in the registration, along with a specimen of use:

• between the fifth and sixth anniversaries of the registration, as noted in question 8.1;
• then within the one-year period immediately preceding the expiration of 10 years from the date of registration; and
• then the same again for each successive 10-year period thereafter.

See Sections 8 and 9 of the Lanham Act (15 USC §1058-59).

Answer ... Any party that believes it is or will be damaged by a registration may petition for cancellation under Section 14 of the Lanham Act (15 USC §1064). The typical grounds for cancellation include the following:

• There is a likelihood of confusion with a senior (earlier used) mark;
• The mark has become generic;
• The trademark owner has abandoned the mark (ie, has discontinued use with an intention not to resume use); and
• The trademark owner obtained the registration by fraud.

Answer ... If a trademark owner fails to submit the required proof of use of the mark under Section 8 or 9, the USPTO will cancel the registration.

Answer ... The procedure is much the same as that for opposing a trademark application, as discussed in question 5.5.

Answer ... The procedure is much the same as the procedure for appealing an opposition decision, as discussed in question 5.6.