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How to Maintain Your Trademark in the United States and Internationally **Attorney Advertising**

Trademarks are an integral piece of any company’s intellectual property foundation, but the protection that comes with having a registered trademark does not last forever. In the United States and across the globe, there are steps that you must take to maintain and renew your trademark as time goes on. This process can become rather complicated, especially if you own registered trademarks in multiple countries, as different laws, timelines, and procedures apply depending on in which countries you have trademarks registered.

Your attorney can help you access the laws of each individual country and navigate those systems, but using the US as an example, you can expect the renewal process to look like the following:

Trademark Renewals in The United States

  • 6-Year Initial Renewal
    • Between years 5 and 6 after registering the mark you will need to file at least a Section 8 “Declaration of Use of Mark in Commerce” document to prove that your trademark is currently being used by you in US commerce . Along with the official fee, you will need to submit a specimen proving your appropriate use of the trademark. If you miss this renewal period, you will be allotted a grace period of six months and will need to pay additional fees.
  • 10-Year Anniversary Renewal

    • Between years 9 and 10, you will need to file a combined Section 8 and 9 Declaration of Use & Renewal. Here again, you will need to prove that your trademark is still actively being used in commerce and pay an official fee. This will need to be repeated every ten years for as long as you wish to maintain your trademark.

Trademark Renewals Internationally

The Madrid Protocol is a treaty that offers US-based corporations the opportunity to apply for and register trademarks in any Madrid Protocol member countries via the USPTO. There are special rules that trademark owners must abide by if they have received their international trademark through the Madrid Protocol. If the rules are not properly followed, the business or brand could lose their international registrations. 

Renewal Under the Madrid Protocol

  • In general, renewal papers must be submitted every ten years from the original filing date with the World Intellectual Property Organization (WIPO). At this time, you must meet renewal rules required by both the USPTO and the WIPO independently or you risk losing your mark.
  • In addition to the renewal papers, an affidavit will also need to be filed every ten years with the USPTO stating that you are still using your trademark in the United States.

Most other countries require renewal every ten years. Of course, the Intellectual Property laws for each country vary, and you will need to work with your attorney to ensure that there are no exceptions to this rule or earlier deadlines that you may have to abide by.

There may be Special Use requirements in each country. For example, the Philippines and Mexico require proof of use within three years of filing, China only requires proof of use if another contests legitimacy, etc.

Taking proper care to renew your trademarks at the required times can help ensure that you will not lose your legal protection and rights. Be sure to ask your attorney from the start of the registration process about the timelines you can expect for renewal so that you have a general idea of any deadlines that you may be facing. Be sure to stay in contact with your attorney so that you can take all steps necessary to renew your trademarks as the deadlines approach.

If you have questions about trademark renewals either in the United States or Internationally, contact our 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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