Why I let my trademark registration lapse

In 2006 I filed to register the trademark LIKELIHOOD OF CONFUSION®, not because I had experienced much in the way of a need for trademark enforcement, but because doing so seemed like an awesomely cute idea.  Which it was.

The mark was registered on May 15, 2007.  I filed a combined Section 8 and 15 affidavit in 2012.  And life went on.

And for ten years no one needed to be sent a cease and desist letter in which I brandished my registered mark.  I had no occasion to request that U.S. Customs interdict infringing goods at our nation’s ports.  There was no need for me to prevent the use of my trademark by interlopers using it as a Google Ad Word to divert users or to initially confuse their interests

In May I got a reminder, under the PTO’s excellent new courtesy reminders program, regarding maintenance of my mark as its registration approached the ten-year deadline.  I got a series of other reminders from my firm’s internal ticklers, including a human one to the effect that, while I pondered the matter, I was running out of grace period.

The deadline was approaching.

Well, the LIKELIHOOD OF CONFUSION® registration is “resting comfortably.” It’s only a matter of time until nature takes its course.

Yes, I let it go.

I know:  Trademark registrations can be very valuable things.  Sometimes, however, they are not.  Sometimes they are only a matter of vanity.

I have written about senseless, vain trademark filings for almost as long as I have been blogging.  Now, if you read the blog or just poke around you will see that I have plenty of vanity.  But I don’t need a registration for the LIKELIHOOD OF CONFUSION trademark, and I never did. It was a goof, and a good one, but LIKELIHOOD OF CONFUSION for “online journals, namely, blogs featuring news, analysis and commentary on developments in trademark, copyright, new media and free speech” isn’t a trademark that needs registering.  In fact, to date it hasn’t even needed enforcing. That may not be true for all blog names, but after more than a dozen years I can say it’s true of this one.

Vanity plate

And vanity imposes costs beyond the spiritual and psychological.  If you’re vain about your looks, you have to pay for pretty clothes, hairdressing, a gym membership, or whatever those people need.  If you’re vain about your cleverness — believe me, it costs.

The cost of trademark registration vanity is not so trivial either:

Between the 9^th and 10^th year after registration, you must file a combined declaration of use and/or excusable nonuse and application for renewal under Sections 8 and 9 (combined filing).  The USPTO forms combine the Section 8 declaration with the Section 9 renewal application.  A Section 9 renewal application is a written request to keep your registration active.  The fee for filing a combined section 8 declaration and Section 9 application for renewal is $425 per class of goods or services in the registration.

A combined filing filed during the grace period must include an additional $200 fee per class of goods or services.  The fee includes a $100 grace period fee per class of goods or services for the Section 8 as well as a $100 grace period fee per class of goods or services for the Section 9 renewal.

A combined Section 8 declaration and Section 9 application for renewal must be filed every ten years calculated from the date of registration.  Failure to file required maintenance documents will result in the registration being cancelled or expired.  The deadline to file maintenance documents is established by law and cannot be waived or extended.  If your registration is cancelled, your only recourse is to file a new application with a new application filing fee.

I can use $425. I can use $625 even more.

So “the registration will be cancelled in due course.”

Let’s see if anyone tries something.