In the United States it is necessary to file a sworn “Declaration of Continued use”, between the fifth and sixth year from the registration date, in which it is stated the mark is used in the United States. The declaration must be filed to the US Trademark Office and it is mandatory in order to keep the trademark alive; the purpose of the Declaration is to remove marks no longer in use from the register.
The “Declaration of Continued Use” will be accepted if filed within six months after the deadline with the payment of an additional fee.
In the “Declaration of Continued Use” it is stated that goods (or services) listed in the Certificate of Registration are actually used in the United States: it is possible to delete goods /services for which trademark is not used.
With the “Declaration of Continued Use” some specimens per class of goods/service claimed in the registration must be filed. Examples of acceptable specimens for the USPTO are labels for goods and advertisements for services.
US Law takes into consideration the possibility of an “excusable nonuse”: there exists a “Declaration of Excusable nonuse”, which is a sworn statement that the mark is not used in commerce due to special circumstances that excuse such nonuse and is not due to any intention to abandon the mark. Such declaration must include, inter alia, the date of the last use of the mark in commerce as well as the approximate date when use in commerce is expected to resume and details concerning the reasons for nonuse. Nonuse due to the decreased demand for products does not by itself constitute “excusable nonuse”.
US Law states, moreover, the possibility of filing a “Declaration of Incontestability” (not mandatory, but only optional): it is a sworn declaration, filed by the owner of a mark registered in the Principal Register, claiming the incontestability of his trademark rights for goods/services specified in the declaration.
The “Declaraiotn of Incontestability” cannot be filed if it is not possible to demonstrate that trademark has been in continuous use in commerce for at least five consecutive years subsequent to the date of registration and is still in use in commerce.
Declaration of Incontestability must include, inter alia, the declaration that there has been no final decision adverse to the owner’s claim of ownership of the mark for the goods/services, or to the owners’ right to register the mark and that there are not proceeding involving the trademark rights pending in the USPTO or in a court of law.
When a trademark becomes incontestable some arguments of attack are precluded for third parties: for instance, third parties lose the possibility to state that the mark is merely descriptive of goods and services claimed by the same. At the same time, t is necessary to bear in mind that the mark is not totally incontestable since it remains contestable for some reasons (among these, for example, if abandoned for nonuse, if it has become generic term for the goods claimed or if the declaration of the incontestable right to use the mark was obtained by fraud).