Keep Your Trademarks Forever: An Overview of Trademark Renewal

Unlike other forms of intellectual property (e.g., patents and copyrights) trademarks can, in theory, be maintained forever. To do so, however, the U.S. Patent and Trademark Office (“USPTO”) maintains strict and unwavering requirements concerning the maintenance of U.S. Trademark Registrations. As such, once a Trademark Registration is received, you must calendar these important deadlines or use a service to do so to make sure that your Trademark Registration is not permitted to lapse.

Of note, many trademark owners do not realize that once a trademark is registered it can still be canceled through a Cancellation Proceeding initiated by any party who feels that it may be injured by the continued registration of the trademark. Typical grounds for cancellation proceedings include, but are not limited to: (1) a likelihood of confusion with another trademark wherein the other trademark claims priority of use; (2) that the registered trademark is merely descriptive and, as such, is incapable of functioning as a trademark; (3) fraud perpetrated in the filing or maintenance of the registration; and (3) abandonment or non-use of the mark without an intent to resume use thereof.

If a trademark owner receives notice of a cancellation proceeding typically through a document known as a Petition to Cancel they should seek the advice of counsel immediately as there are strict deadlines to respond thereto. If a cancellation proceeding is not defended in a timely manner the Trademark Registration will be canceled.

Putting the threat of cancellation aside, here are the standard renewal deadlines of which all trademark owners should be aware:

5th - 6th Year Affidavit of Continuous Use and Declaration of Incontestability

Between the 5th and 6th year anniversary of the registration a trademark owner is required to file a Section 8 Affidavit of Continuous Use to Renew the Registration. This is an affidavit verifying that the trademark is still in use and requiring the trademark owner to supply evidence of that use to the USPTO. If the Section 8 Affidavit is not filed between the 5th and 6th year anniversary of the registration there is a 6-month “grace period” after the 6th year anniversary during which the affidavit can still be filed although additional fees will apply. If no Section 8 Affidavit of Continuous Use is filed during this 18 month time frame the Trademark Registration is canceled.

During this same time, namely between the 5th and 6th year anniversary of the registration, a trademark owner may file a Section 15 Declaration of Incontestability. In short, this document certifies that a registration has been registered in excess of 5 years and, as such, can now only be canceled for (1) fraud perpetrated in the filing or maintenance of the registration; or (2) abandonment or non-use of the mark without an intent to resume use thereof. There is no mandatory requirement that a Section 15 Declaration of Incontestability be filed although it is recommended.

9th - 10th Year Application for Renewal and Affidavit of Continuous Use

On or about every 10-year anniversary of the registration of a mark a trademark owner is required to file a Section 8 Affidavit of Continuous Use and a Section 9 Application for Renewal of the Trademark. The filings are required to be completed within one year of each 10-year anniversary (e.g., between the 9th and 10th year anniversary of the registration of the mark, between the 19th and 20th year anniversary of the registration of the mark, etc.) or within a 6-month grace period following each 10-year anniversary. As always if the filing is made during the “grace period” additional fees will apply.

Provided that trademark owners comply with these deadlines and their Trademark Registration(s) is/are not otherwise canceled via a cancellation proceeding they will be able to maintain their trademarks for a long long time.

TheTrademarkCompany.com