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How to Renew a Trademark

by marketing 25/11/2019

how to renew us trademark

Read Time: 7 minutes

Table of Contents


1. Why do You Need to Renew Your US Trademark?
2. Renewal Timeline for Your Trademark
3. What Goes After This?
4. Common Mistakes that Should be Avoided
5. Bottom Line

 

Has your trademark registration lapsed and you are looking forward to renewing it? Do you need further assistance even after reading a series of articles on trademark renewal? Are you still in the darkness trying to figure out the next legal steps to be made?

At Brandnic, we help you by giving comprehensive guides that are easy to follow.

The simplicity of the guides makes them DIY-friendly hence, no need to hire an attorney.

This article is, therefore, meant to help those who need help to renew their trademarks. Therefore, sit back and prepare to learn.

Why do You Need to Renew Your US Trademark?

Trademark is very important and overall, it acts as a protection of business ideas. This defines why there is a need to renew trademarks once the need arises. Remember after registering the trademark, you were entitled to the ownership and other responsibilities by the United States Patent & Trademark office. One of these responsibilities is to make sure that the trademark is renewed at the required period as needed by the USPTO. So, what are the reasons that make it necessary to renew a trademark? Let’s find out.

how to renew us trademark

Renewing your trademark.

Maintaining Ownership

In the US, trademarks are valid for up to 10 years and are renewable. However,

The USPTO requires trademark owners to renew their trademarks in the fifth to sixth year.

This is a mandatory failure to which, you will automatically draw in a penalty. The penalty is nothing else but a cancellation of the trademark. That’s bitter! Renewing your trademark, therefore, puts you in a better position of further ownership.

Trademark owners should also note that the USPTO doesn’t remind you when the renewal time arrives despite being crucial.

Proof of Use

After getting a trademark, the USPTO gives you up to 10 years. Under this period, you are required to ensure that the trademark is active and usable.

However, the USPTO doesn’t know whether you are using the trademark or not.

Renewing a trademark, therefore, can be used as an indication that you are still owning the trademark and it’s active.

Renewal Timeline for Your Trademark

We’ve seen that the duration for a federal trademark is 10 years. Renewal dates are very important. There are different renewal dates that you ought to know. The renewal of a trademark majorly aims at ensuring that your trademark is active. In the next section, three different timelines have been discussed. However, considering the importance of a trademark in your business, you can choose to file a renewal earlier than the stated time.

trademark expired

Renewal of trademark expired.

First Renewal Timeline

The first renewal timeline is due 5 years after the trademark registration date. This is the most important renewal date that you can’t afford to miss. Here, the USPTO requires you to file a form that proves you’ve been using the trademark and you’re still using hence, ownership shouldn’t be terminated.

You should also note that renewal comes with fees that you will be required to provide.

Also, you will be asked to disclose whether you are still using the trademark in the same way or you changed in the long run.

trademark renewal waiting

Trademark renewal waiting timeframe.

If humanity is to be considered then, forgetting can’t be an exception. You may just forget that you are supposed to file a renewal considering that no one reminds you. The good news is that there is a grace period.

The grace period lasts for 6 months after the required renewal date.

However, the grace period isn’t ‘grace’ as you may think. If you file a renewal in the grace period, you will have to draw in a penalty that would see you paying up to $100. It doesn’t matter if you are going to renew a slogan or a tagline, So, if you forget to file the renewal in the normal period, don’t miss doing it on the grace period.

Click on the link to find out about how to register a slogan or phrase.

Second Renewal Timeline

This is due 9 years after the registration date. The second renewal timeline constitutes all the information in the first renewal timeline. Besides, you will be required to file a statement of continued use. Effectively filing of the second renewal will see your trademark extend to the 10 years. The renewal is done on the period between the ninth and the tenth year.

Third Renewal Timeline

The third renewal is due 10 years after the second renewal. Here, the USPTO just wants to know whether your trademark is in use or not. Therefore, you will be filing renewals to confirm ownership and continued use.

What Goes After This?

You may still be wondering what happens after the third renewal timeline. Well, it’s simple. After you renew your trademark for the third time, you will be required to make further renewals after every ten years. Besides, trademark owners are required to provide strong evidence that may include photographs of products. In the long run, you will also have to ensure that your products are a usable failure to which your trademark may be canceled. Remember, a trademark is not just owning a logo, a brand or a word. Instead, it’s all about making sure that your customers continue benefiting from the product or service and making them aware that you are the only producer or manufacturer.

Just in case you’ve been trying to figure out how long a trademark can last, it depends on yourself. It can last for decades provided that you maintain it.

You can also consider applying an affidavit to prove incontestability.

renewal timeline

Trademark renewal timeline.

Filing an affidavit triggers extra protection for your trademark. On the USPTO website, you can find the affidavit of incontestability form. As a business owner whose trademark has been in existence for comparatively long, it’s important to consider filing this form. Filing the form may also prevent you from drawing in different possible charges in the future.

Common Mistakes that Should be Avoided

In this last section, let’s look at the common mistakes that people make and should be avoided at all costs. Renewing and filing trademarks takes a lot of time, conscious, and concentration. Below are some of the possible mistakes that people can make and should be avoided though there are many more.

Misunderstanding The US Laws

Different laws abide by the process of application and renewal of trademarks. As a trademark owner, you ought to know all the rules and ensure you don’t transgress any.

Erroneous Filing

When making an application to the United States Patent & Trademark Office, ensure everything is correct. After inserting all the required information, double-check the application to see if there are any errors. Some of the possible errors that can lead to disregard are; poor grammar and spelling mistakes.

False Declaration

When filing a renewal, USPTO requires you to be honest and provide the correct information. For example, when some of the goods and services that were registered under your trademark aren’t provided, again, you will be required to indicate them in the renewal form. The mistake of retaining the items that you aren’t selling may put your trademark at a very big risk since it’s a transgression of the USPTO laws.

Irrelevant Hiring of Attorneys

When you want to file a trademark renewal, depending on how knowledged you are, you may consider hiring a lawyer. Although lawyers can help you effectively, hiring the wrong one may be the biggest mistake you can make.

Missing a Deadline

The first trademark renewal timeline is due 5 years after the registration date. As a trademark owner, missing a deadline can cause two possible problems. Filing a renewal during the grace period (6 months given by the USPTO) would see you pay an additional $100 as a penalty. The second problem that you may land on is getting your trademark canceled – this happens after you fail to file the renewal even after being given the grace period.

To avoid mistakes while trademarking a company name check the link.

Bottom Line

Here at Brandnic, we consider it our responsibility to keep you safe and protect you from any inconvenience. There are a lot of companies and individuals who can be found online claiming to offer solicitations. For security and protection purposes, we recommend you to be extra careful just in case you want to undertake such activity.

The US Patent and Trademark Office, also, don’t advise anyone to use those private companies. Some are legit and they can help you effectively.

The most important thing is to make a thorough research about the company before accepting to work with them. You should note that any loss that may arise as a result of using private companies to help you file a renewal or register, wouldn’t be compensated by anyone.

The companies and individuals who want to “run away with your money” you can be very active at the period approaching the renewal date. They are doing this since they know most trademark owners tend to be desperate at that time. They may be willing to offer their services at a lower rate just to take your money. Please beware and take caution. Remember, the USPTO team is available to offer any help and answer queries to all. If you are stuck, it’s advised to contact them and see how they can help you.



How to Trademark A Company Name

by Brandnic Official 12/11/2019

Registering Trademark

Read Time: 12 minutes

Table of Contents


1. Choosing a Trademark
2. Why should you trademark your business name?
3. Recognizing Trademark Name Restrictions
4. How to trademark a business name?
5. For how long a trademark lasts?
6. What to do when someone trademarked your business name?
7. To Wrap it all

 

Who holds the trademark name, ‘Apple,’ is it the Beatles or Apple?

Well, technically Beatles came up with ‘Apple Corps,’ and after 8 years, Steve Jobs created ‘Apple Inc.’ The two mega giants are in battle since.

Can you even imagine the word ‘Apple’ being a trademark? Apple paid a large settlement to the Beatles for their trademark. But after the launch of iTunes, the trademark battle was heated up again and got settled by Apple Corporation losing the case and Apple Inc. gaining control over the trademark.

Someone wise once said that prevention is better than cure. So, if you are planning to launch a music company or any food company, I would suggest that you avoid the word ‘Apple’ and use some other fruit instead.

But you might be asking how to trademark a company name?

That is a quick question to ask. Let’s get straight to it.

Choosing a Trademark

In the United States, there are two types of Trademarks.

Two Kind of Trademarks

Two types of trademarks.

The first one (™) can be used by anyone.

If a conflict arises in the use of the mark, it is resolved legally, and the earliest party wins the case. The trademark is acquired by the United States Patent and Trademark office.

The second trademark is a registered trademark (®)

This means that no one can use the process of the company, and to deal with this, it is good to take some legal advice before you use any trademark.

Why should you trademark your business name?

2012 was a special year for Beyoncé and Jay-Z. Their daughter, Blue Ivy Carter, was born with a silver spoon in her mouth. The parents applied their daughter’s name. Wait. What? You might be thinking, can a baby name be trademarked? Well, it did with Jay-Z and Beyoncé because they planned to launch a product line by their baby’s name.

When a baby can have her name as a trademark, what is the reason that your business doesn’t need one?

What does it mean to trademark your name? Does it matter in the long haul? How will you benefit from it? These are just a few questions that can force you to register a trademark for your brand.

There are many trademark cases still waiting for a verdict in court. You are not planning to end in court.

There are a few reasons that can help you understand the importance of trademark and why your business needs a trademark?

  • A trademark reveals the emotional connection that a brand has with its values, mission, and people. When a business trademark a name, it is more like naming your baby. When you name your baby, you establish a deeper connection with that baby.
  • In a highly crowded digital space, a trademark makes it easy for customers to find you.
  • Trademark is an asset in disguise. When you trademark a business, it means that the company has more opportunities to expand from one industry to another without affecting the core brand. Furthermore, it gives more giant corporations to acquire your brand without feeling worried about any trademark sue.
  • Businesses who trademark their brand shows how serious a business is for their brand. This emits positive energy to the existing employees and even attract new employees who are willing to get associated with something personal.

Brands are a critical asset, which is why trademark a name is significant for a new business or even for older ones.

secure your trademark

Secure your digital asset.

I’ve been around successful entrepreneurs, and some of them failed massively at some point. But, during their business life, all of them asked this question more than once, do I need to trademark my business name? As easy as it sounds, it is a hard choice to make.

Another question that bothers startups is, do I need to trademark my business name and logo?

The simple answer to both the questions is yes. If you are serious about scaling your business. If you believe that one day, you’ll create a brand worth talking about, then you must begin by filing a trademark application for your business.

Recognizing Trademark Name Restrictions

The trademark will give you an exclusive right to use words, phrases, and symbols in your business that will become the identity of your business. In short, you must be careful what phrases you trademark because they will become your identity in the future.

To learn how to trademark a slogan – read our in-depth guide on it.

When Beyoncé filed a trademark for the Blue Ivy trademark, it was allowed easily because the parents intended to use the name for personal reasons. They were planning to sell baby-related products. So, Beyoncé prevented other people from using her daughter’s name to sell anything.

One thing to remember here is that you trademark a name for the protection it must be unique. A generic title like “Hot Coffee” or “Tom” might not be qualified for being a trademark. When “Blue Ivy” is used as a brand name, it gives it meaning. Just like Apple is for computers, Blue Ivy will become a brand name for baby-products or whatever brand the parents are willing to start.

understanding trademark restrictions

Understanding the concept of trademark restrictions.

A trademark will increase its value. Moreover, names like “Google” or “Microsoft” are made-up of suggestive names that define the qualities of the product or service that they are associated with.

When applying, it is necessary that you trademark something that doesn’t create even a binge of confusion. You might consider every possibility that there is no product or service related to your brand name.

Every trademark application must provide full details about the products/services that will be offered within the brand name. Confusion often arises when similar marks are used on related goods, and customers find it hard to identify the difference. It is hard to start, but with a bit of research in the market, you’ll be able to come up with a unique trademark name that won’t be copied or used in any case.

How to trademark a business name?

To trademark your business, you can use the following steps:

Step 1: Figure out the type of trademark

The first step that you need to do is to find a brand name for your business.

To ensure that your trademark fits on the US Patent & Trademark Office (USPTO). The trademark must be non-intuitive, which means there should be no double meaning for the trademark.

The USPTO divides marks into four categories that will determine the strength of your trademark. From weaker to the strongest, you’ll in which category your trademark will exist.

Registering Trademark

Preparing your name for a trademark.

  • Fancy Trademarks

This is the most reliable type of trademark. There is an insignificant chance that a company or an individual will use this trademark. This comprises of made-up words and also words that are not associated with any product or business. For instance, if you have a shoe company, “Brontox” can be a unique name that you can use. It is fancy and unique at the same time, and there is no chance that anyone will be using this type of name.

  • Suggestive

As the name itself suggests, this kind of trademark is used to describe specific traits of the service or the product. The trademark type is not as strong as a fancy trademark, but still, you can get suggestive mark easily as it will be relevant to your business. A good example might be using “Bright & Soft” as a tagline for a t-shirt company.

  • Descriptive

This is considered a weak mark. There is a chance that other people are already using the trademark that you plan to use. So, it will take some hit and try to get a trademark that you want to use. One of the most straightforward examples for this mark is a cleaning service using “Wash & Scrub with ease.”

  • Generic

It’s nearly impossible to trademark anything that lies in this category. These types of trademarks are often used commonly in conversations, so it is impossible to enforce any trademark on such words. For example, if you try to name a company “Lantern,” it would be difficult to trademark it as it is generic.

Step 2: Search if the trademark already exists

You can use the Trademark Electronic Search System, TESS, to search in the trademark database. You’ll be able to search if your desired trademark is available or not.

Step 3: Fill the Trademark application

In the next step, you have to fill the form online from the USPTO website.

If you were doing it for the first time, you could start by reading trademark basics, which will give you a vague idea about the requirement and which type of trademark you need for your business.

Step 4: Paying the Fee

Depending upon the type of your business, you’ll be required to pay a fee for your trademark. Check out the basic fee structure, which will help you decide better.

Step 5: After filling the application

Once you’ve applied, there are a few things that you must note.

  • It can take several months before you get anything from USPTO.
  • You should monitor the TESS database, which will help to inform you about the progress of your application.
  • You will get either “Allowed” or “Published for the opposition” from USPTO.

Step 6: Respond quickly to USPTO

The USPTO will review your application and contact you if you correct your errors or if your application is not approved. Once you get the reply, you must respond to USPTO fast. Don’t be disheartened if the application gets rejected the first time. At times the examiners at USPTO make mistakes, or they are just looking for some more clarification from your side. If you can, it would be good to hire an attorney who can help you to send an excellent reply to USPTO.

Step 7: Administer your trademark

You might learn how to trademark a company name and apply everything in your hand to keep it that way. But USPTO will not enforce trademark, other than just preventing other people from using your brand name.

Once your trademark is approved, it is your responsibility to take legal action if you see that someone is using your trademark. If you don’t enforce the trademark and other people start using it, your trademark can lead to the “Generic” category, which means that you might lose the trademark.

For how long a trademark lasts?

You might ask, how long does the trademark last? Well, to keep your trademark intact, you just need to do some additional USPTO filings.

Initially, your trademark will last for five years; then, you will have to renew after ten years.

As mentioned earlier and it is worth repeating it here again. You must keep checking the TESS database and the internet from time to time to spot any infringements that have been done before it gets too late.

Read more about – how to renew your trademark with a detailed explanation.

trademark life

Trademark lasts for 10 years.

Ensure that you use the “circle-R” mark ® along with the trademark so that people recognize it as soon as they see it. The “circle-R” is used for products, services, or goods if you have a brand so you can use TM or ™ so that it will be clear what type of trademark you are using. Don’t use ® or ™ with the company name to identify the company or even particular goods or services that are being used with your brand.

Finally, if you would fail with renewal your trademark may become dead.

What to do when someone trademarked your business name?

Imagine you’ve worked hard to design a business name or logo or establish your branding. You can quickly stop other companies from using it.

It is a bit confusing. The trademark laws are a bit confusing, so even the smartest businessman won’t know what to do. Of course, USPTO has various tutorials, FAQs, and guides that can help you to move forward with trademark infringement; some tips can help you do things efficiently.

someone trademarked your business

Protecting your business.

The following steps will turn the process less stressful and painful for you. You might go through these tips, but if you don’t know or understand anything about trademark infringement, it is highly recommended to hire an attorney.

But with the following steps, I hope that some pain with go away, and you’ll not use common names like zippers, aspiring, or even escalators, which might be trademarked names of the brands.

Step 1: Is it a Trademark Infringement?

Before you get angry and jump into a lawsuit, it is wise to know that if the problem exists or not. Let us review some facts that will clear your mind, and then you can discuss with your attorney if you still plan to file a lawsuit.

Trademark Infringement

Checking trademark infringement.

  • First, the trademark infringement will occur when the consumer gets confused among the use of the trademark, whether it is being used for multiple goods or products. For the same reason, Delta Airlines & Delta faucets are handled separately. When you plan on designing the bathroom you will probably not in a mood to buy an airline ticket by mistake. If someone uses your trademark, is it confusing your customers?
  • The next step is to consider the location. If you open a flower shop in New York and someone with the same name opens a flower shop in California, this is not an infringement at all. Because both the states have their customer database, and no one will be mixing.
  • If you can scale the business on a global scale, you might be in a good position to file an infringement irrespective of the location. The most common case is an eCommerce store. There is no geographic barrier to online presence so that it can affect both the businesses in some way.
  • Another thing that you must know about trademark law is the sound, sight, and meaning of the mark. So, even if you add an “s” to make it plural, that will not be sufficient to distinguish from each other. Or if you are planning to open a fast-food restaurant and making it, “McDowell’s” won’t help you to prevent it from being sued.

Step 2: Take action

If you came to know that your business name is being used by any other business or your customers are being confused because of the two names, or if you think that your name is being used in the same geographic location, you must think of taking action.

Firstly, contact and discuss it with your attorney. The attorney will help you to go through these steps smoothly:

  • The first action that you must take is to send a cease and desist letter to the business that is infringing your business name and demanding them to stop using your mark. Check out this sample letter that will help you to get a good start. Just review it with an attorney before you send it to anyone.
  • WHOIS the domain name and make sure that you understand the domain name.
  • Id, the alleged person, doesn’t stop using your trademark, then the next step is to file a lawsuit in federal court. This will prevent further use of your mark, and you’ll get the money for additional damage. You can easily ask the court to pay you money for the damages that your brand has endured because of the infringement.
  • If the dispute is regarding using a domain name, you can file a lawsuit. If you are willing to go full, you can file a complaint with ICANN’s approved dispute resolution
  • The Uniform Domain Name Dispute Resolution Policy – (UDRP) is established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of issues and disputes opened up against domain cybersquatting, until unless you get your brand name from Brandnic.com where you are sure that you can establish your own brand without having a fear of getting a UDRP on your business.
  • You must file complaints keeping in mind the state and federal courts. You can try to use “common law” rights to an extent, but for anyone to take you seriously, you must take help from federal protection law along with USPTO. The domain name registries will demand a federal trademark so that you can easily protest someone else’s domain.
  • This is why it is essential that you apply for trademark protection as soon as you launch your business, product, or even a service. Mostly, the small business owners make this mistake of not filing a trademark until it is too late. And when they realize, it becomes nearly impossible to fight for who owns the name or who was first using the name. Therefore, it is wise that you make the decision fast and trademark your product/service as soon as possible.
solving dispute

Try to resolve a dispute with direct negotiations.

If someone has trademarked my business name, it is wise that you try to deal it personally before going for a lawsuit. Because when you file a lawsuit, it will cost money, and your valuable time will be wasted. But, if the other party doesn’t move back, then you must file a lawsuit so that no one else can even think of using your name, service, or product for granted.

To Wrap it all

In most cases, a duplicate name won’t cause problems if they have different customer demographics. Because as mentioned earlier, both the customer market won’t get a chance to interact with each other so there will be nothing to worry about.

If you are planning to scale your business on a global scale, then it is quite necessary to trademark your company name, product, or service. When you do so the customers from every corner of the world will know that it is your brand name and only you are operating the brand. This is the typical case with eCommerce websites where the owner doesn’t realize the reach of the customer, and as time passes it gets difficult for them to file a trademark. Because after a specific time it is difficult to figure out who owns the real business name.

The steps mentioned above will give you a clear picture of how to trademark a company and why it is essential to trademark a company in the first place. Regardless of everything, it will be your choice of how you want your business to proceed.

A trademark for your business name will surely benefit you in the long haul, and you won’t have to worry about any sudden surprises.

Brandnic helps entrepreneurs to get a brand identity in the shape of a business domain name that they can own and get started with their online venture.





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