The certificate arrives from the USPTO, you frame it, and the file goes in a drawer. That drawer is where a surprising number of trademark rights quietly die. Registration gives you a legal presumption of ownership and nationwide priority, but it does not monitor the market for you and it does not renew itself. The attorneys at Braslow Legal see the pattern often: a brand invests in getting registered, spends nothing on keeping the registration alive or enforcing it, and five years later discovers the mark is weaker than the day it issued.
What deadlines can cancel my registration if I miss them?
Three filings keep a federal registration on the register, and the USPTO cancels marks for missed deadlines without sympathy.
Between the fifth and sixth anniversary of your registration date, you must file a Section 8 Declaration of Continuing Use with a specimen showing the mark actually in commerce for each class. Between the ninth and tenth anniversary, and every ten years after that, you file a combined Section 8 and Section 9 renewal. Each has a six month grace period that carries an added fee per class.
Fees changed in January 2025, so verify current amounts on the USPTO fee schedule before you file. As of this writing, the Section 8 declaration and the Section 9 renewal each run $325 per class, with a $100 per class surcharge in the grace period. A Section 15 Declaration of Incontestability, optional and available after five consecutive years of use, costs $250 per class and is worth the money. Incontestable status forecloses most challenges based on descriptiveness or someone else’s claim of prior use.
One trap deserves attention. The USPTO runs a post registration audit program that randomly selects maintenance filings and demands proof of use for goods and services beyond what you submitted. If you registered for fifteen products and sell four, an audit can mean deletion of the unused items or cancellation of the registration. Clean up your goods and services list before the audit finds you.
How do I find infringers before they build a following?
Enforcement starts with knowing what is out there, and the useful monitoring happens on a schedule rather than by accident.
Search the USPTO’s Trademark Search database on a recurring calendar reminder, because the agency will not notify you when a confusingly similar application publishes. Commercial watch services automate this for a few hundred dollars a year per mark and cover federal filings, state registrations, and domain registrations. Pair that with manual sweeps of Instagram, TikTok, Amazon, Etsy, and Google.
Timing matters more than most owners realize. Once an application publishes in the Official Gazette, you have 30 days to file an opposition or a request to extend that deadline. A first 30 day extension is free and automatic. Miss the window entirely and your only route is a cancellation proceeding after the mark registers, which is slower and more expensive.
Should I send a cease and desist letter?
Sometimes, and rarely as the first move. An aggressive letter to a small business or an individual creator can end up screenshotted and posted publicly, and the resulting backlash frequently costs more than the infringement ever would.
Start by assessing whether the other party is actually causing confusion in your market, whether they have senior rights in their geographic area, and what you realistically want from them. A phased approach works better: a short, professional letter identifying your registration and asking for a conversation, then a formal demand only if that is ignored. Some disputes resolve through a coexistence agreement carving out territories or product categories.
Be aware that a demand letter can provoke a declaratory judgment action, meaning the recipient sues you first in their home forum. That risk shapes both the tone of the letter and where you send it from.
What enforcement options exist besides filing a lawsuit?
Several, and most cost a fraction of federal court.
- Platform takedowns. Amazon Brand Registry, Etsy, Meta, TikTok, and Shopify all have trademark complaint processes. Brand Registry in particular requires a registered mark and unlocks tools that remove counterfeit listings within days.
- TTAB proceedings. Oppositions and cancellations are administrative and decide only the right to register, not damages, which makes them cheaper than infringement suits.
- Expungement and reexamination. The Trademark Modernization Act created these ex parte petitions to clear registrations covering goods the owner never actually sold. Filing costs $400 per class, far less than a cancellation proceeding.
- Customs recordation. Record your registration with U.S. Customs and Border Protection through its online IPR system and CBP officers can seize counterfeit imports at the border.
Counterfeiting cases carry real leverage. Under 15 U.S.C. ยง 1117(c), a court may award statutory damages up to $200,000 per counterfeit mark per type of goods, rising to $2,000,000 for willful counterfeiting.
How do brand owners lose rights through their own conduct?
Three consecutive years of nonuse creates a presumption of abandonment under the Lanham Act. Licensing your mark without controlling the quality of the licensee’s goods, known as naked licensing, can forfeit rights entirely. Letting the public treat your brand as the name of the product rather than the source of it produces genericide, the fate of aspirin, escalator, and thermos. Use the mark as an adjective, police your licensees, and keep dated specimens of use in a folder you can find.
Registration begins a maintenance obligation rather than closing out a project. Audit your portfolio annually, calendar every deadline, and treat monitoring as a budget line item. If your registration has been sitting in a drawer, Braslow Legal can review its status, flag upcoming filings, and build an enforcement plan sized to your business. Reach out through the firm’s website to start that conversation.
