After your trademark gets registered, you might notice it’s only valid for 5 years. At that point, it’s common to wonder: can a trademark be renewed, or not?
Ultimately, getting your trademark renewed is mostly a matter of filing paperwork on time. However, the process of doing so is more complicated than it might appear to be at first.
This article will walk you through the basic conditions necessary for trademark renewal. We’ll also discuss what to do if you can’t get your trademark renewed.
A trademark exists to mark words, logos, and products as the intellectual property (IP) of your business. While you have an active trademark, you can legally prohibit others from using your trademark without your permission. This prevents your brand from being diluted and misrepresented to customers.
However, the United States Patent and Trademark Office (USPTO) requires that trademarks actually be used. Part of the way they do this is by requiring trademark holders to periodically file applications for the renewal of their trademarks.
After you receive a trademark, you have nine years to renew it. If you don’t, you’ll lose the exclusive right to the intellectual property. Any ongoing litigation will be heavily impacted, and in the worst case, you might never hold the IP again.
Note that the USPTO doesn’t send out notices reminding trademark holders to renew their trademarks. It also does not provide notice when it cancels a trademark.
Fortunately, it’s pretty easy to file for renewal of your trademark registration. Using the USPTO’s website, you can submit an online Section 9 Application for Renewal. Note, however, that you will probably want to use the combined Section 8 and Section 9 form–something we’ll talk about more below.
As a quick note, my experience has been that clients who file forms at the USPTO on their own have the same issue as scientists cloning dinosaurs at Jurassic Park–while you can file USPTO forms on your own, you really should stop and ask if you should file on your own.
For a renewal, the USPTO charges a fee of $300 for every class of goods or services that you have applied under. This fee exists in part to discourage individuals from filing under every trademark class that they can. Thus, it’s in your best interest to only file under the trademark classes that actively apply to your product or service.
Note, however, that this seemingly-simple process is complicated by the fact that you have to show use to keep your trademark. If you haven’t shown use of your trademark during the nine years that you’ve had it, you won’t be able to file for a renewal.
The hardest part of renewing your trademark is showing use. This means demonstrating that you actually use your trademark in your business, and promising that you will continue to do so. To do this, you’ll have to file a Section 8 Affidavit of Use with the USPTO.
The deadlines for the Section 8 form are a little more complicated than the Section 9. The first form is due within five years of receiving the original trademark. Then, you’ll need to file another Affidavit along with your Section 9 form in the ninth year after receiving your trademark. After that, you can file a Section 8 and a Section 9 form every ten years.
If you miss either of those deadlines, you actually have a six month grace period in which to file your paperwork. However, filing late like this incurs extra fees, and is not advisable.
Depending on your good or service, demonstrating use can be difficult. You will almost certainly need photographs demonstrating the use of your trademark, and may have to file other paperwork with the USPTO. An experienced trademark lawyer will be helpful during this process.
Finally, note that there is also a fee for filing an Affidavit of Use. It’s significantly cheaper than the renewal fee, at only $125 for every class of good or service.
If you have missed one or more of these deadlines, there are still options available to you. These options depend on whether or not another individual has claimed your trademark while it was inactive.
If nobody else has claimed your trademark, you’re in good luck. All you have to do is submit a new trademark application and a new fee. This is also a good opportunity to change things about your trademark, such as the classes you registered under.
If another individual has filed the same trademark or a similar one, things will be more difficult. It’s unlikely, but you might be able to file a new trademark under a different trademark class to avoid problems. There’s also a chance that even though you didn’t maintain registration, that you still maintain common law trademark rights as the priority user.
Either way, you’ll need to work carefully with a trademark lawyer to determine the best way forward.
So can a trademark be renewed? The answer is generally “yes,” but it relies on the trademark holder staying on top of their deadlines. You should always file affidavits of use and renewal applications as early as possible, to avoid potential complications.
As always, a good trademark lawyer can assist you in filing any paperwork relating to your trademark.
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LAWYER & ONLINE ENTREPRENEUR
After graduating from law school and passing the bar, I struggled to find work, pay my bills, and make ends meet. That's when I decided to take control of my future and start working for myself. Now, several years and a handful of companies later, I'm sharing how I launched a successful business, and how you can do it too.