Trademark Renewal

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Trademark Renewal

Understanding the United States Patent and Trademark Office trademark renewal procedure is essential for any trademark owner.  Following the rules and deadlines set forth by the USPTO will ensure that your trademarks don’t expire.

Like the initial trademark application process, there are several hurdles to renewing a trademark.  In fact, improperly trying to renew a trademark can result in the loss of your trademark registration.

USPTO Trademark Renewal

To maintain a trademark, trademark renewal documents must be filed with the USPTO between the 5th and 6th year after registration, and then every 10 years after registration.  So a trademark will only last 6 years unless it is renewed.

These renewal periods are meant to ensure that you have met the requirements of continued use in commerce over the years. If your trademark isn’t used commercially for three consecutive years – or if you don’t file the appropriate trademark maintenance documents in a timely fashion – your trademark will abandon.  USPTO trademark renewal also maintains your legal remedies if a third party commits trademark infringement.

Trademark Renewal Period

Trademark maintenance documents are required infrequently, but you must stay abreast of when they are due. Failure to file timely renewals will result in your trademark being cancelled. This will require you to start the entire registration process from the beginning, and there’s no guarantee that the USPTO examining trademark attorney will grant a new registration.

Your first Section 8 renewal must be submitted between the five and six years after registration. This timeline starts from the moment of actual registration rather than your application date. If you fail to meet this deadline, you have a six-month grace period in which you can still file but there will be an additional fee.

At this point, if possible you should also file a Section 15 to make the trademark incontestable. This will ensure your trademark cannot be challenged unless it becomes generic, falls into nonuse or was obtained through fraudulent means. Incontestability requires that the following requirements be met:

  • Trademark must be registered on the Principal Register.
  • Continuous use in commerce for at least five years.
  • No adverse or pending legal proceedings involving trademark rights.

Between 9 and 10 years after registration, you will need to submit a Section 9 renewal. This also has a six-month grace period but with additional fees.  Another Section 8 declaration is due at this time. From that point on, you’ll need to submit a combined Declaration of Use and Application for Renewal every ten years after registration.

While the renewal period is legally set at 10 years, trademark cancellation could occur before this deadline. This can occur if someone files a Petition to Cancel that claims that your trademark hasn’t been used in commerce for three consecutive years.  The USPTO doesn’t monitor use in between trademark renewal periods, so if this occurs, a competitor is likely trying to take away your rights.

If this occurs, you can expect the following:

  • You’ll have 40 days to respond to Trademark Trial and Appeal Board (TTAB).
  • A Discovery phase to collect evidence.
  • Trial briefs and evidence presented to TTAB.

About 2000 trademark cancellations are filed each year.  While these proceedings take place with the Trademark Trial and Appeal Board rather than federal courts, they operate very similarly to a lawsuit in court.  Even with a trademark renewal period of 10 years, continued use of your trademark is essential to avoid cancellation.

Trademark Renewal Process

When filing your Section 8 renewal, you must include the following:

  • Declaration: This is a legally binding statement attesting to continued use in commerce.
  • Evidentiary specimen: Actual images of your trademark in use.
  • Government fees: Filing fees must be paid during every trademark renewal process.

As you’re preparing your declaration, it’s mandatory that you list goods or services that should be removed from your registration. Many companies file under multiple trademark classes because they sell a variety of products. If your trademark is no longer being used in commerce with these goods, failure to disclose this fact could result in your registration being cancelled entirely.

Once your initial Section 8 declaration has been filed, future filings are only required when the Section 9 renewal form is due.  Section 9 renewal – like other essential trademark filings – can be done online. Evidence of use isn’t required with this filing. This is simply your request to continue your current protection. Since a Section 8 declaration is required during each renewal, however, you’ll still need evidentiary specimens when submitting trademark maintenance documents.

The combined Section 8 and Section 9 forms can be found on the USPTO website here.

Trademark Renewal Timeline

Filing the appropriate maintenance documents doesn’t guarantee that your trademark will be renewed. Just like the original registration process, your renewal will have to go through USPTO specialists before being approved. You can expect the following trademark renewal timeline after you’ve submitted your documents:

  • Sent to specialist: Your trademark renewal is sent directly to a specialist at the USPTO Post Registration Division.
  • Timely review: You’ll receive a Notice of Acceptance/Renewal or an Office Action within two months.
  • Dealing with Office Action: You’ll typically have six months to remedy any issues described in an Office Action.

Your trademark renewal timeline could be longer if you take advantage of the six-month grace periods following expiration. If you submit maintenance documents on time, the entire process could be complete within two months.

Trademark Renewal Service

Most businesses don’t have the time or expertise to handle the trademark renewal process themselves.  Regardless, it is good to have a trademark lawyer calendaring the dates for you to be sure the trademark is not abandoned.  A trademark law firm will offer trademark renewal services that will file the appropriate specimen, submit your filing fees, and ensure everything is properly filed and processed before USPTO deadlines.

When choosing a trademark renewal service to work with, though, it’s important to know exactly what you’re getting. The USPTO provides a list of potential scam trademark renewal services that you should avoid. One such business listed by the USPTO sends out flyers stating the following:

“Complete this form below and return it in the enclosed envelope with your payment of $200 to receive all documentation to renew your trademark and avoid cancellation and late penalties.”

While the document may look official, the company promises nothing more than to send you required USPTO documents for a cost of $200. All these forms are easily found on the USPTO website, so you may be spending hundreds of dollars for absolutely nothing.

Trademark Renewal Fees

Here are the fees you can expect during renewal:

  • Section 8 Declaration: A per-class fee of $125 is required for each Section 8 Declaration of Use.
  • Section 15: A per-class fee of $200 is required for trademark incontestability.
  • Section 9 Renewal: Renewals have a per-class fee of $300. Combined Section 8 and Section 9 submissions are $425 per class.
  • Late fees: Renewals submitted during the six-month grace period will include additional per-class fees of $200.

Trademark renewal deadlines cannot be extended or waived. Failure to file maintenance documents prior to the six-month grace period expiration will result in an expired trademark.

Contact Us

At Mandour & Associates, we understand how important it is to properly maintain your trademarks. For assistance with trademark renewal issues, please contact us today.

 

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