If you’re thinking about renewing your trademark registration, the cost, requirements, and timeline are here. If you’ve registered a trademark, check the information below to ensure you’re getting the most bang for your buck. You may also want to read up on trademark cancellation proceedings. Finally, read on for the basics of trademark renewal and learn how to avoid them.
Renewing a trademark registration is a process of re-affirming ownership of a trademark
There are many steps in the process of registering a trademark. The first step is to apply to the United States Patent and Trademark Office (USPTO). Next, the examining attorney examines the application for compliance with the Trademark Manual of Examination Procedure. During this review, the examining attorney determines whether the applicant’s mark is unique, not descriptive of a prior product or service, and is not confusingly similar to a competing mark.
Once allowed, the trademark registration is valid for a period of 10 years from the date of registration. To maintain the registration of a trademark, it must be renewed every 10 years. The renewal must be filed within 6 months before the expiration date.It’s important to note that the renewal of a trademark registration is mandatory to maintain the registration in force. If the renewal is not made within the prescribed time, the registration will be considered expired and the owner of the trademark will lose all rights associated with it.
When renewing a trademark registration, it is also important to ensure that the trademark is still in use, as a trademark registration can be challenged or cancelled if it is not being used. In some countries, the owner of the trademark must prove that the trademark is being used in order to renew the registration.
It’s important to keep track of the renewal date and to renew the trademark registration on time to avoid losing the rights associated with it. Some trademark offices also offer a reminder service to notify the owner of the pending renewal date.
To keep your trademark registration active, you must file these documents within the deadlines.
- Between the fifth- and the sixth year after the registration date
Subsection 8: Declarations of Use and/or Excusable Nouse.
- Between the ninth to 10th years following the date of registration
The first Declaration of Use and/or Excusable Nuse, and the Application for Renewal according to sections 8 and 9 are required.
- Each 10 years thereafter (between the 19th-20th years, 29th- and 30th years, etc.).
Subsequent Declarations Of Use and/or Excusable Nuse, and an Application For Renewal Under Sections 8 and 9
The USPTO will send courtesy emails reminding you of the deadline for your maintenance filing. Even if you do not receive a reminder email, you still need to file the documents on time.
After each deadline, there is a 6-month grace period. The grace period is open to all applicants, however, you will need to pay an additional fee. Your registration will be canceled or deemed expired if you fail to file within the grace period.
Remember that, to keep your registration valid, you must continue to use your trademark. Federal registration is only available to trademark owners who are using their trademarks in commerce.
Applicants submit specimens to prove that they are using their trademark on a regular basis. Renewing a trademark registration is essentially the same as defending your trademark, but it shows that you’re still actively using the trademarked material.
A trademark renewal application often involves filling out a Declaration of Use statement, which shows that the applicant is still actively using the trademarked material.
USPTO is quite specific in its definition of what constitutes “use,” so it’s good to remove any products you don’t plan to sell anytime soon.
Once the trademark is registered, the owner must apply to renew it every five years. There are many benefits of renewing a trademark registration. For example, it will give you more legal protection. You will also be able to use the trademark in other ways.
The process of renewing a trademark registration is quite simple and can be done by the owner or a third-party assignee. Trademark registration can be transferred to another person in several ways.
One of these is through an assignment of the trademark to another entity. However, the trademark cannot be sold without the underlying goodwill.
For example, if the trademark registration is being sold to a third party, the sale of goodwill is needed to support the transfer of the trademark.
Goodwill is defined as the intangible value of a piece of property and is an essential element of the trademark transfer: assignments attempted without goodwill are considered invalid.
Another advantage of renewing a trademark registration is that it helps to protect your rights in multiple countries. Often, trademark registration is suitable for five years, but you can renew it more than once.
A trademark can be registered in more than one jurisdiction in the US (state and federal). This is referred to as territoriality. There are many reasons why this is important. It will protect you against counterfeit goods and keep your reputation intact.
The cost of renewing a trademark
Often, trademarks will have to be renewed every ten years, but this is relatively inexpensive if you are timely. The filing window for trademark renewal opens six months before the expiration of the initial ten-year period. The renewal period gives the applicant an extra year to use the trademark before it expires.
The cost of maintaining a trademark can range from $550 to $2050, depending on the complexity of the renewal process and the attorney fees. Trademark maintenance involves filing a Section 8 declaration with the USPTO in many cases. During this process, the trademark owner must provide proof of business use in the marketplace and pay $225 per class.
The fees for trademark maintenance are calculated per class, and if your registration is for multiple classes, the fees are higher. As a rule, you must pay a fee for each class of goods or services. For example, computer software is in Class 9, whereas t-shirts are in Class 25.
Requirements for renewing a trademark registration
To renew a trademark registration, you must submit an application for your trademark renewal on a timely basis.
USPTO renewal is usually completed through TEAS, the electronic filing system that enables you to upload images and credit card information. Then you receive a confirmation email.
When applying for a renewal, it is essential to remember that the renewal date is crucial, as if you miss the deadline, your registration will be canceled. So, don’t let yourself get caught off guard! Make sure to review your requirements for renewal carefully.
Upon submitting your renewal application, you must submit a signed Declaration of Use statement verifying that you are still using your trademark in connection with the listed goods and services.
In addition, you must identify any goods or services that no longer display your trademark and submit a copy of the letterhead or packaging. After submitting the form, click on Manage Attachments, and upload your specimen. Ensure to attach the certificate from your previous renewals as proof of use.
Whether you have a product or service that carries your trademark, you must regularly monitor its use. By not renewing your registration at the appropriate time, you risk losing your rights to the trademark and will have to start the trademark registration process from scratch.
You can learn more about renewal by reading about the renewal process and the requirements for renewing your trademark registration. In addition, once your trademark registration expires, you must renew it at the USPTO’s website.
You must file a Section 71 statement within five years if you have a US registration. You must file a Section 15 incontestable statement within ten years if you have a Madrid-based registration.
A FEW YEARS AGO, the USPTO started sending reminder emails about post-registration maintenance filings. Still, only businesses can receive these. Insufficient time does not mean that you will not submit your renewal application.
Timeline for renewing a trademark
To keep your trademark valid, you must file regular maintenance documents and pay fees to the USPTO. The time frame for filing the required maintenance documents and filing fees starts on the date of registration.
After three years, your trademark registration will expire, and you must file a new application with a new trademark maintenance document, the Statement of Use. Once you have submitted your Statement of Use, the USPTO will issue a Registration Certificate.
Filing a Section 8-maintenance application will give you a five to six-year window to renew your trademark. The second Section 8 renewal timeline will be five to six years from the date of registration.
The renewal fee will be due again if you do not meet the deadline. You must make sure your trademark is registered on Principal Register and that no adverse legal proceedings have occurred against your trademark. In addition, the renewal fee will be greater if your trademark has not been renewed in a year.
If you file a Petition to Cancel your trademark before the renewal deadline, your trademark will automatically be canceled. However, if your trademark has not been used in commerce for three years, a competitor may be trying to infringe on your trademark.
The trademark owner has 40 days to respond to the complaint in such a case. After receiving the notice, the TTAB will begin the discovery process, in which the trademark owner will present evidence to support its claim.
Filing the renewal application is simple, but you mustn’t miss the deadline. Remember, USPTO reminders do not relax the cancellation policy, so make sure to file your renewal on time and early.
The USPTO will send you an email reminder if your renewal is coming up. Be sure to check your spam folder for emails from the USPTO, as they can end up in the junk folder.
The first trademark renewal filing is due between the fifth and sixth year of the initial registration. In the meantime, if you have not used your trademark for more than ten years, you must file a Declaration of Use or an Excusable Nonuse.
These documents prove that you have been using your trademark for at least one year. Once you have filed your declaration, you will be required to file an SS9 Application for Renewal.
You should immediately delete your registration if you cease using your trademark for any of the goods and services listed in your registration. To delete the goods or services, file a section 7 request. There is no fee to delete goods or services between maintenance filings.
Reevaluate your trademark usage before you file any maintenance documents. To remove your trademark from your registration, you will need to identify the goods and services that you aren’t using with your trademark. This is a free service that allows you to delete goods and services.
You will be charged a fee for each class that has deletions if you submit one of the required maintenance documents. We will send you an office action if you fail to pay the fee when you delete goods or services. Your entire registration will be canceled if you fail to pay the fee within the time limit for responding to the office action.
This fee is charged to ensure your trademark registration is up-to-date by notifying the USPTO of any changes to your trademark use. You are violating federal trademark registration laws if you don’t.
Our official records of federally registered trademarks, also known as the “trademark registry”, are used by members of the public. Information about trademark use that is out of date in the trademark registry reduces its utility for providing notice to businesses and the general public.
Excusable nonuse during COVID-19
You can request temporary exclusion from your trademark if COVID-19 has adversely affected you or your company. See the Registration Maintenance/Renewal/Correction Forms page for more information.
Declaration of Incontestability
You can file an optional Declaration under section 15 if your mark has been registered on Principal Register. You can combine your SS8 filing with the Combined declarations of use and incontestability under sections 8 and 15 form if your mark is eligible for incontestability. TMEP Section 1605 provides more information.
Section 7 Correction or Amendment to Registration
You can make a non-material amendment or correction to your registration by filing a Section7 Request for Amendment or Correction in Registration Certificate.
If you cease using your trademark for certain goods or services and don’t have the required maintenance document, this form must be used to request that we remove those goods from your registration.
Your registration must be accurate to show that your trademark is being used in commerce only. Additional fees will be charged if you fail to comply with this requirement before you file a maintenance document. For more information about the legal requirements, please refer to TMEP Section 1609.