If you had recently received approval from the United States Patent & Trademark Office on your trademark registrations, congratulations! Now the difficult part of obtaining the registration is completed, it becomes important to be diligent on keeping track of and completing all the maintenance and renewal requirements to ensure your registered trademark is in good standing.

Owning a registered U.S. trademark comes with a series of responsibilities that include maintaining and renewing the mark within the requirements and deadlines set by the United States Patent & Trademark Office (USPTO). The trademark renewal system is there to prevent trademark congestion and ensure that those trademarks which are inactive and no longer in use are not left on the trademark register.

Unlike copyrights, trademarks are not limited to a set term of years and have the potential to last forever. To keep a trademark registration alive, the trademark owner must regularly file the required maintenance and renewal documents before the deadlines set by the USPTO.

Renewing a U.S. Trademark Registration

It is important to note that trademark protections held in several countries for a product or service have different renewal protocols. It is the responsibility of the trademark holder to keep track of and comply with the renewal deadlines and requirements of each trademark issuing body.  In this article, we will address the renewal requirements of a U.S. Trademark.

First Renewal Trademark Filing

The first renewal date of a trademark is five years from the date of initial registration. The USPTO does not send reminders when the renewal is due. Because this duration of time is extended and not annual, it is very easy for the trademark holder to forget to renew.

To complete this first renewal requirement, you must file a combined declaration, specimen, and fee on a date that falls on or between the fifth (5th) and sixth (6th) anniversaries of the registration. This filing functions as a binding statement that the mark remains in active use, and it must include a trademark specimen illustrating the use of the mark in commerce. If a trademark holder ceases to use the mark in connection with the particular goods or services identified in the registration, the registration becomes subject to cancellation for non-use.

Second Renewal Filing

The second renewal is due over the course of the ninth year of ownership, but before the tenth anniversary of the date of initial registration. The second renewal filing will extend the life of the trademark for an additional ten years. It will again require a statement and illustration of continued use in commerce, as well as a separate renewal form and renewal fee.

Third (and subsequent) Renewal Filings

All subsequent renewal filings, including the third filing, should be made every ten years thereafter. Provided that there is continued use of the mark in commerce and all renewal dates are met every ten years after the second renewal filing, the owner becomes entitled to ownership of the trademark indefinitely. All subsequent filings will continue to require statements and illustrations of continued use, and the mark is still subject to being cancelled without adequate use throughout the trademark holder’s life.

Consequences of Missing a Renewal Deadline

Missing a renewal deadline may result in the cancellation of a trademark without notice. If the trademark is cancelled, the entire trademark registration process must begin all over again in an attempt to reclaim federal trademark registration rights.

Flat Fee Trademark Renewal Filing

Contact us today for a flat fee rate on filing a renewal of your trademark, more information on maintaining and renewing your trademark registration, or other trademark registration and enforcement needs.