By Michael Li
Continuing to repair a discontinued product does not automatically preserve your U.S. trademark registration for that product. Your business may still handle warranties, return repaired equipment and earn service revenue, but those activities do not necessarily establish continued trademark use for the registered goods. When preparing a maintenance filing, you may need to remove unsupported products from the registration—even while keeping protection for other goods still in use.
In In re Bose Corporation, the dispute concerned the WAVE trademark, U.S. Registration No. 1,633,789.
Bose had stopped manufacturing and selling audio tape recorders and players in 1996–1997. However, its January 8, 2001 maintenance filing still included those goods. Its general counsel believed that repairing previously sold equipment and returning it to customers amounted to continued trademark use.
The Trademark Trial and Appeal Board disagreed and ordered cancellation of the entire registration for fraud.
On August 31, 2009, the Federal Circuit reversed that result because the evidence did not establish the required intent to deceive. However, the court also concluded that the registration needed to be restricted because the mark was no longer in use on the recorders and players.
Bose’s successful appeal therefore did not preserve every listed product. It defeated cancellation of the entire registration on the fraud ground, while leaving the unsupported goods to be removed.
A U.S. maintenance filing concerns the goods and services identified in your registration. Continuing to operate the business does not establish that every item on that list remains supported.
For registrations subject to Section 8, the owner must identify the goods or services for which the mark remains in use, or establish qualifying excusable nonuse. Unsupported items generally need to be removed.
A typical maintenance filing requires a specimen for each class. That does not mean evidence for one active product validates every other product listed in the same class.
For example, continuing to sell headphones does not automatically support a declaration covering discontinued tape players simply because both appear under the same brand and in the same class.
For the wider task of tracking filing routes, deadlines and responsibilities across countries, our trademark maintenance guide explains how to organize those obligations.
Start with the exact goods and services in your registration. Then ask your sales, service and finance teams to explain what each business record represents.
The following worksheet helps prepare the facts for review. It does not determine whether a particular transaction legally qualifies as trademark use.
| Business record | Question to resolve | Why it matters |
|---|---|---|
| Complete-product invoice | Was this a genuine sale, and which product and trademark does it identify? | Selling a product is different from servicing a customer’s existing property. |
| Warranty repair ticket | Was the customer’s original unit repaired and returned? | A repair transaction should not be mistaken for a new product sale. |
| Shipping confirmation | Was this a sale, repair return, replacement or internal transfer? | A tracking record alone may not explain the underlying activity. |
| Replacement-part invoice | Which part was sold, under which mark, and does the registration cover it? | Parts revenue needs its own connection to the registered wording. |
| Product webpage | Is it a current sales page, an archived listing or a support page? | A visible brand name does not establish that the product remains available for purchase. |
| Distributor report | Does it identify dates, products, territory and the distributor’s role? | A statement that “the brand is still active” leaves important facts unanswered. |
Avoid sending an unexplained folder labelled “proof of use.” Add a short index connecting each document to the relevant product, activity and registered term.
If an invoice contains only an internal stock code, include the information needed to identify the corresponding product. If a shipment was a warranty replacement, describe it accurately rather than grouping it with ordinary sales.
A specimen shows how customers encounter your trademark in connection with the relevant goods or services.
For goods, examples include genuine photographs showing the mark on products, labels or packaging. For services, evidence may show the mark advertising or providing the relevant service.
A page offering manuals for discontinued equipment may demonstrate ongoing customer support. It does not necessarily establish the use needed to maintain a registration for the equipment itself.
Likewise, a repair-service webpage should be assessed against any services actually covered by the registration. Do not assume that a registration for equipment can simply be rewritten to cover a repair business. Goods and services cannot be added or broadened through an ordinary correction; a separate application may need consideration.
Replacement parts introduce another distinction: whose mark identifies the part, and whose mark merely explains compatibility? Our article on trademarks in product listings explains how product titles, brand fields and compatibility statements can communicate different relationships.
Suppose your business previously sold countertop coffee machines under one brand. You have stopped selling complete machines, but you still repair customers’ equipment, sell replacement filters and offer a newer line of grinders.
Your financial report groups all three activities under the same brand. Revenue continues, and your customer service team remains busy.
That report does not, by itself, answer which goods and services should remain in the registration.
Prepare separate evidence files:
Compare each file with the registration’s wording. Do not instruct the person preparing the declaration to retain everything merely because the overall brand still earns money.
This is an illustrative scenario, not an IPcrossark client case or a conclusion about a particular registration.
Reviewing your goods list before submission can prevent avoidable correction work.
The USPTO states that deleting goods or services in the original maintenance declaration does not attract a deletion fee. However, deleting them while a Section 8 or Section 71 declaration is pending generally incurs a $250 fee per affected class each time a deletion is made. A deficiency surcharge may also apply.
An audit can expand the evidence request within an audited class when the initial response does not establish use for the selected items. Removing only the products named in the first request may therefore leave further issues unresolved.
Before authorizing submission:
Do not treat deletion as a casual administrative choice. The decision affects the registration’s scope, so distinguish unsupported goods from items whose use requires further investigation.
A request to “renew the trademark” can involve several different tasks.
One registration may need routine document preparation. Another may require an assessment of discontinued products, repair activities, uncertain evidence, an earlier declaration or a potential claim of excusable nonuse.
Explain those facts when requesting a quote. Ask whether the proposed work includes:
Our guide to choosing IP legal services explains how to compare responsibilities, deliverables and fees. A filing-only quote and a quote including substantive evidence review may cover different work.
No. An obligation to support existing customers does not itself establish the use needed to retain the product in a maintenance filing. Describe the actual activities and assess them against the registered goods.
Potentially, for appropriately identified goods and qualifying trademark use. Do not assume that selling a component establishes continued use for the complete machine. Provide the parts records separately for review.
A possible future relaunch does not establish present use. Excusable nonuse requires qualifying circumstances and supporting information. The USPTO explains that reduced product demand alone does not establish excusable nonuse.
No. An inaccurate use claim and a proven fraud claim are different issues. However, the absence of fraud does not make unsupported goods eligible to remain in the registration.
Provide the registration, the product’s sales history, repair records, relevant webpages and a timeline explaining when sales stopped. Identify any separate parts sales or service business so the assessment addresses your actual activities.
IPcrossark’s U.S. trademark renewal services provide an entry point for discussing maintenance filings, supporting documents and the scope of assistance.
If your product range has changed, start with your registration number and a short list of what you currently sell, what you only repair and what you have discontinued. This helps identify the questions that need attention before documents are prepared.
Contact IPcrossark to discuss the relevant service, required materials and proposed fees. Where the matter requires a legal assessment of qualifying use, excusable nonuse or an earlier declaration, confirm the involvement and responsibilities of appropriately qualified U.S. trademark counsel.
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