TRADEMARK RENEWALS

Trademark ownership has the potential to last indefinitely so long as you are continuing to use the mark in commerce in connection with your listed goods and services. To maintain your registration of the mark, the USPTO periodically requires renewals to confirm your continued use.

• Your first renewal is due between the 5th and 6th year after your original registration.

• The second renewal is due between the 9th and 10th year after your original registration.

• Thereafter, renewals are due every 10 years

If you do not file your renewal on time, your trademark registration will be abandoned.

RENEWAL QUALIFICATION

To qualify for renewal, you need to accurately declare that you were continuously using the mark in commerce in connection with all of your listed goods and services and provide a specimen showing an example of such use accordingly.

If you were using the mark in connection with some of your listed goods and services but not all, then you can modify the list accordingly. Note, it is important that the information you include is accurate, as an inaccurate filing can be considered fraud and grounds to cancel your trademark if someone is ever trying to attack your ownership. 

This is also a good opportunity to update the address and ownership of your mark as needed. 

EXCUSABLE NON-USE

If you do not qualify for renewal, the USPTO may allow you to maintain your registration if you can accurately declare excusable non-use. Acceptable reasons for excusable non-use may include acts of god, litigation, or sale of business.

DECLARATION OF INCONTESTABILITY

In addition to renewing your trademark registration, once you have had the mark registered for over 5 years, you may also qualify to file a declaration of incontestability. While this does not provide absolute immunity for your trademark as the name suggests, it does strengthen your ownership by limiting the ways in which someone could contest your trademark. Mainly, this prevents others from contesting your mark on the grounds that the mark is in some way descriptive. This is a one time filing, and the benefits are generally permanent so long as your mark is registered. 

To qualify for this, you must also accurately declare that: 

• There are no pending or final judgments adverse to your ownership or right to register the mark (i.e. a court proceeding or ruling that is either active, or final, and that either threatens or has damaged your ownership to the trademark).

• The mark has not become generic (this is rare, but occurs when a brand name becomes commonly used by others to describe the associated goods and services, like "Kleenex" is used to describe tissue paper) 

Filing your first trademark renewal and declaration of incontestability are often done simultaneously, and we generally recommend you do so with professional assistance.

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This article is for informational purposes only and is not legal advice.