Patent Attorney and Founder
Keeping track of your trademark renewal timeline is vital to protecting your branded assets. It’s not just a matter of paying a fee or submitting an application. There are steps to take to secure your trademark, and they happen at different times in your registration’s lifetime.
This can get particularly tricky as many businesses own multiple trademarks, and it’s likely none of them were issued on the same day. On top of that, global companies need to worry about their international trademark registrations. Working with an experienced trademark attorney is your best bet for tracking deadlines.
The Trademark Renewal Timeline
There is a bit more to maintaining a trademark than simply applying. The first thing you need to do to keep a trademark active is to use it. A trademark is deemed abandoned after approximately three years of nonuse, so it’s essential to stay on track and keep records. You’ll have to prove that use at various intervals. Below is the basic trademark maintenance timeline.
(source: https://www.uspto.gov/trademarks/maintain/keeping-your-registration-alive)
Declaration of use and/or excusable nonuse under §8 |
Declaration of use and/or excusable nonuse and an application for renewal under §§8 and 9 |
| In the declaration of use, you’ll list all the classes of goods and services covered under your trademark registration. You’ll also need to inform the USPTO if you’ve stopped using specific categories of goods and services. You will have to pay the appropriate fees for all classes. Finally, you’ll have to submit a signed statement attesting to the accuracy of all that’s reported. | This section covers the maintenance of a trademark at year ten, and every subsequent ten-year period. You’ll be required to submit all the same information as listed in the first renewal, as well as cover all the accompanying fees. You’ll also have to submit specimens proving your use, like packaging materials or brochures. |
A note on excusable nonuse
The cases we’ve talked about above cover most circumstances. However, in limited cases, it is possible to maintain a trademark you didn’t use. If you can show that you lost the use of your trademark due to circumstances beyond your control, you may be able to appeal the abandonment. COVID-19 is a common current reason, and the USPTO has created a specific category of excusable nonuse for businesses affected by it.
Missing the deadline for your trademark renewal can get expensive. While USPTO will send out renewal notices via email, the onus is on you to keep track of due dates. If you miss your deadline, you get a six-month grace period—with an additional fee. If you miss the grace period, your registration expires.
Working with an attorney who can manage these deadlines and filings on your behalf is the best bet. On top of keeping your US trademark registration current, they can also help in the international space.
International Trademark Renewals
International trademark deadlines are generally based on the US registration date and follow the US timeline:
The one document you’ll need to know about for this is the Declaration of Use and/or Excusable Nonuse under section 71. The required information is the same as the other declarations of use. This section also requires the submission of samples to prove the use and a statement attesting to the validity of your claims.
If you’re global now or thinking of it in the future, you’ll need to plan for international protections for all those target markets. It can be tough to stay on top of different deadlines, which can put your protection at risk.
Most intellectual property attorneys will provide ongoing support for trademark renewal timelines for the life of your brand, although most of them require a fee to do so. They can also help you understand the complex submissions that will be required to prove your use. Legal guidance, in the beginning, pays for itself by saving you from expensive fees, denied applications, or missed deadlines.
Bold Patents offers ongoing services to keep track of the trademark renewal timeline. To learn more, contact us or call 800-849-1913.