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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.





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