Maintaining U.S. Trademark Registrations: Small Uses By Foreign Owners Sufficient

Foreign owners of U.S. trademark registrations have a problem. They obtain a U.S. registration, without using the mark in the U.S., based on a home country registration or an International Registration. However, the owner must use the mark in the U.S. later to keep the U.S. registration alive. To prevent the USPTO from automatically cancelling the registration, the foreign trademark owner must file a document (an affidavit or declaration) in the USPTO claiming current use in the U.S. during the 6^th year after registration and with the renewal application at 10 year intervals after registration. A claim of excusable non-use can also work, but is difficult to prove. Often, the foreign owner uses the mark in its home country and wants to maintain the U.S. registration, if possible, to reserve the mark for a future U.S. launch or help prevent pirates from confusing people in the U.S. who know the mark. The purpose of this article is to suggest some tricks and tips to help