Obtaining a trademark for your business name, tagline, or logo is not a “one and done” process. Over the years, you will need to renew your trademark and complete a number of maintenance steps in order to keep your trademark active and alive. In general, trademarks are valid for 10 years, but there are additional steps you must take during the first decade when you renew your trademark to remain in good standing with the United States Patent and Trademark Office.
Your first opportunity to maintain your trademark comes between your 5th and 6th years after registering the mark. At this time, you will need to file a Section 8, “Declaration of Use of Mark in Commerce” document to prove that your trademark is currently being used for business. Along with the official fee, you will need to submit a specimen showing your trademark in use, such as a screenshot from your website or a photo of your trademark being used on the packaging or labels of your goods. If you miss this renewal period, you will be allotted a grace period of six months and will need to pay additional fees.
During this 5th and 6th year window, there is also an optional filing called a “Declaration of Incontestability” to obtain incontestable status. If you are applicable for incontestable status, filing a declaration of incontestability can eliminate certain grounds that your trademark can be attacked on.
10-Year Anniversary Renewals
Between years 9 and 10, you will need to file a combined Section 8 and 9 Declaration Form. As with the “Declaration of Use”, you will need to prove that your trademark is still actively being used in commerce and you will need to submit a filing fee. You will repeat this step every 10 years for as long as you wish to maintain your trademark.
What If I’m No Longer Using the Trademark?
Then you can simply choose not to renew your mark. If you’re not actively using your trademark by year 5, or anytime thereafter, you can just let it lapse. There are some very limited circumstances (such as sale of a business, retooling, trade embargo or other circumstance beyond the registrant’s control) where you can file a “Declaration of Excusable Nonuse”.
What Happens If I Unintentionally Fail to Maintain My Trademark?
If you fail to meet the maintenance requirements between years 5 and 6, or if you fail to file by the 10-year deadline, someone else can register your mark. If you simply stop using your trademark, a court can also find that you’ve abandoned the mark, opening up the possibility for someone else to grab it. If failing to register your trademark was truly a mistake or oversight, you may be able to file a petition to revive your trademark depending on the circumstances.
I Need Help Renewing My Trademark. Can an Attorney Assist Me?
A trademark attorney can help you stay on top of the various deadlines to renew your mark and help you complete the proper registration forms to ensure that you do not lose your trademark protection due to a mistake or oversight. If you’d like assistance with the process, we invite you to contact our Copyright and Trademark attorneys at 888-666-0062 to schedule a consultation.
DISCLAIMER: The information contained in this article is for informational purposes only and is not legal advice or a substitute for obtaining legal advice from an attorney.
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