Need to Know About Trademark Renewal

Once registered with the United States Patent and Trademark Office (USPTO), your trademark doesn't automatically expire as long as it continues being used commercially; however, to maintain its protections and benefits you are under an ongoing obligation to renew it periodically.

One of the more difficult elements of maintaining a trademark is understanding its renewal timeline. Renewal periods established by the USPTO aim to ensure your mark continues being used commercially - failure to use for three or more consecutive years could see your mark considered abandoned, while renewing could help preserve legal options should someone infringe it against you. Trademark lawyer will help you from initial to end.

As follows are the trademark renewal intervals:

First "renewal" filing--In the U.S., trademark renewal filings consist of Section 8 filings due between the fifth and sixth anniversary from initial registration date of a trademark registration. At this anniversary, trademark owners can elect either filing just Section 8 filings alone, or both the 8 and 15 filings (affidavit to verify use in commerce).

"Second" renewal filing -- The actual trademark renewal is typically due between the ninth and tenth year after registration; this marks its initial full renewal process with Section 8 (affidavit that trademark remains active) as well as Section 9 (10 year renewal). Both documents must be filed together.

Third and subsequent renewal filings -- A trademark owner can maintain ownership indefinitely provided they continue using their mark commercially and file an annual renewal application with both Section 8 & 9. Therefore, both filings should take place every ten years.

The USPTO allows trademark owners a six-month grace period following each deadline to file for renewals; during this time frame they can still file but an additional filing fee must be paid; any registration that remains after its grace period ends will be cancelled automatically.

If your product or service in the global marketplace includes trademark registration, it's essential that you remain informed about renewal processes and due dates for every country where it may apply. Even if filing through Madrid Protocol, renewal deadlines in each jurisdiction still need to be respected.

Section 8 Declaration of Use or Excusable Nonuse

A Section 8 declaration is filed annually between the fifth and sixth anniversary of trademark registration by its owner to state whether their mark is being used commercially with goods and services listed on their registration, or is being suspended because of special circumstances that excuse nonuse. If nonuse occurs, your statement should include when and why its usage ceased as well as details concerning when you intend to resume use as well as steps being taken towards doing so.

Every 10 years, an application to renew under Sections 8 and 9 should be filed at the USPTO for trademark registration renewal; this filing includes both declaration of use/excusable nonuse as well as renewal request. A Section 9 renewal serves to keep your registration active.

Section 15 Declaration of Incontestability

A Section 15 declaration of incontestability should be filed every five years from registration of a trademark, in which its owner declares their incontestable rights and continuous usage of their mark in commerce for five years post registration - while still continuing use. It must state whether each item listed within its registration has been used commercially within five years from its initial use date, with proof.

Statement must also confirm that there are no active legal proceedings regarding or final legal decisions which contradict owner claims to the trademark, with Supplemental Register entries disqualifying from incontestability status.

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Created on Dec 20th 2023 05:46. Viewed 64 times.

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