The term of a trademark registration differs from that of patents in that it has the potential to continue indefinitely as long as the owner maintains the usage of the mark. However, to renew a trademark registration, the trademark owner must diligently file the appropriate documents at specific timelines. To better understand this renewal process and what it entails, we will review how and when to renew a trademark in the following step-by-step guide.
Trademark Renewal Timelines
In the United States, a federal trademark can potentially last forever. However, for the trademark to remain active and protected, it is essential to submit trademark maintenance documents at specific intervals.
For instance, in the United States, to maintain the protection of a trademark, it is required to file a Declaration of Use and/or Excusable Nonuse between the fifth and sixth year after the trademark’s registration. This action is necessary to demonstrate the trademark’s continuous use and ensure its ongoing protection.
Second Post-Registration Deadline
Between the ninth and tenth years after the initial trademark registration date, the owner is required to renew the trademark registration by submitting a Section 8 Declaration of Use, confirming that the trademark is still in use in commerce, and filing a Section 9 renewal application to maintain the trademark’s active status.
Subsequent Renewals
Following the renewal of the trademark registration at the tenth anniversary, the next renewal deadline will occur after another ten years, and subsequent renewals will be due every ten years after that. This renewal process involves submitting a combined Declaration of Use and Application for Renewal documents.
Consider Filing Early
Consider submitting the required maintenance filings at the beginning of the year in which they are due. Doing so will give you ample time to address any potential errors and make corrections without incurring additional fees if the United States Patent and Trademark Office (USPTO) rejects the filing.
Grace Periods
After each of the deadlines mentioned, there is a six-month grace period during which you can still file your registration. However, it is important to note that you must pay an additional fee if you choose to file during the grace period. Furthermore, if you fail to file before the end of the grace period, your registration will be canceled or considered expired.
Basic Overview of the Trademark Renewal Process
Renewing a trademark involves closely monitoring filing deadlines and preparing detailed documentation to guarantee the trademark’s ongoing legal protection. This includes ensuring that all necessary paperwork is completed accurately and submitted promptly to avoid any lapses in protection. Staying proactive and organized throughout the renewal process is crucial to maintaining the trademark’s legal rights.
The Initial Steps
Regularly check the due dates for maintenance filings using the USPTO Trademark Status & Document Retrieval (TSDR) system. This ensures you stay on top of any required maintenance for your registered trademark.
After checking the due dates, prepare the appropriate renewal documentation. This documentation confirms the continued and uninterrupted use of the trademark.
Renewal Filing
Submit the renewal application and the required fee electronically before the expiration of the current trademark term. If the trademark is currently used in commerce, include a specimen showing its current usage.
After Filing
Monitor the application status closely and be ready to address any inquiries from the United States Patent and Trademark Office. Once the application is approved, you will be granted extended protection for an additional ten-year term.
Contact TM Law Today
If you want to learn more about the trademark renewal process or how our legal team can assist you, contact TM Law today.