How do you renew a trademark registration?
Unlike patents which expire on a definite date, the term of a trademark registration may continue indefinitely as long as the owner continues using the mark. To renew a trademark registration, the trademark owner needs to be diligent in using the mark on the goods or services identified in the registration. There may be situations where nonuse is justifiable and can serve as the basis for “excusable nonuse” as discussed below.
Need to renew your trademark registration? Contact US patent and trademark attorney Vic Lin at 949-223-9623 or email vlin@icaplaw.com to see how we can help you maintain your registered trademark the right way.
While most people might commonly understand “renewal” to mean something you do with a registration to keep it going, the term “renewal” has a specific definition when it comes to the US trademark registrations. Renewal specifically refers to a second post-registration filing that occurs around the 10-year anniversary of the registration. Prior to this “renewal,” a trademark owner must “maintain” the registration by the 6-year anniversary. The USPTO provides a helpful webpage on trademark maintenance and renewal. Here are the basics on how to maintain or renew a trademark registration.
1st Post-registration Deadline: Between 5th & 6th Years
Between the fifth and sixth years following the registration date, the trademark owner (“registrant”) must file a Section 8 statement of continued use with the USPTO. Filing a Section 8 declaration of use keeps the registration alive until the next deadline at the 10-year anniversary discussed below
For a trademark registered on the Principal Register, the owner should also file a Section 15 statement of incontestable rights. A Section 15 declaration of incontestability basically states that there have been no final legal decision adverse to the registrant’s claim of ownership or right to register the mark. Filing a Section 15 declaration makes the registration incontestable, thereby making it much more difficult for third parties to cancel or otherwise challenge your trademark rights. A Section 15 statement is filed only once and typically in combination with the Section 8 during this first maintenance deadline.
For a US registration based on the Madrid Protocol, a Section 71 statement must be filed in this time period. A Section 15 incontestable statement may also be filed after 5 years have passed from the registration date.
2nd Post-registration Deadline: Between 9th & 10th Years
Between the ninth and tenth years following the registration date, the owner must renew the trademark registration by filing a Section 8 declaration of use discussed above and a Section 9 “renewal application.”
The same deadline applies to Madrid-based registrations except that a Section 71 statement should be filed instead of the combined Section 8 & 9 statement. The Madrid registration should also be renewed with the International Bureau (IB).
3rd and Subsequent Renewals: Every 10 Years Thereafter
After renewing the trademark registration at the 10-year anniversary, each subsequent renewal deadline occurs every ten years thereafter.
What are requirements to renew a trademark registration?
Each time a Section 8 declaration of use is filed, the trademark owner must pay particular attention to two key questions:
- Has the mark been continually used on each product or service identified in the registration?
- Are there current specimens of use for at least one product/service for each class identified in the registration that are available to submit to the USPTO?
Deleting Goods/Services Not in Use
If the mark is no longer being used in connection with offering certain goods or services, such non-used goods/services should be specifically deleted from the registration when filing the Section 8 statement of continued use. The risk of leaving non-used goods/services in a registration increases when a particular registration contains a high number of items in a single class (e.g., several clothing items in Class 25).
Specimens of Use
The owner must also submit evidence that the mark is currently being used with at least one product/service for each class identified in the registration. For example, if a registration contains two classes, then the Section 8 filing must include at least two specimens, one for each class. Ideally, you will want to submit multiple specimens for each class in case a particular specimen is deemed unacceptable by the USPTO.
What is Excusable Nonuse?
An exception to the rule of continued use is known as “excusable nonuse.” An applicant may file a statement of excusable nonuse if special circumstances apply, such as [see TMEP 1604.11]:
- Trade Embargo or Other Circumstance Beyond Owner’s Control. Nonuse may be considered excusable where the owner of the registration is willing and able to continue use of the mark in commerce, but is unable to do so due to a trade embargo.
- Sale of a Business. Temporary nonuse due to the sale of a business might be considered excusable.
- Retooling. The mark might be out of use temporarily because of an interruption of production for retooling of a plant or equipment, with production possible again at a scheduled time. However, nonuse due to retooling is excusable only if the owner shows that the plant or equipment being retooled was essential to the production of the goods and that alternative equipment was unavailable on the market. In re New England Mutual Life Insurance Co ., 33 USPQ2d 1532 (Comm’r Pats. 1991).
- Orders on Hand. If the product is of a type that cannot be produced quickly or in large numbers (e.g., airplanes), yet there are orders on hand and activity toward filling them, nonuse might be considered excusable.
- Illness, Fire, and Other Catastrophes. Illness, fire, and other catastrophes may create situations of temporary nonuse, with the owner being able to outline arrangements and plans for resumption of use. Such nonuse is often excusable. However, a mere statement that the owner is ill and cannot conduct his or her business will not in itself excuse nonuse; the owner must show that the business is an operation that could not continue without his or her presence. New England Mutual Life Insurance, supra.
Examples of circumstances which are not excusable include:
- Covid. See the USPTO requirements for nonuse due to Covid-19.
- Business Decision. Nonuse related to a business decision is not beyond the owner’s control and does not excuse nonuse.
- Decreased Demand. Decreased demand for the product sold under the mark, resulting in its discontinuance for an indefinite period, does not excuse nonuse. The purpose of the requirement for an affidavit or declaration is to eliminate registrations of marks that are in nonuse due to ordinary changes in social or economic conditions. See In re Conusa Corp ., supra ; In re Parmalat S.p.A ., 32 USPQ2d 1860 (Comm’r Pats. 1991); Ex parte Astra Pharmaceutical Products, Inc ., supra ; Ex parte Denver Chemical Mfg. Co., supra.
- Use in Foreign Country. Use of the mark in a foreign country has no bearing on excusable nonuse of a mark in commerce that can be regulated by the United States Congress. In re Conusa, supra.
- Use of Mark on Different Goods/Services. Use of the mark on goods/services other than those recited in the registration does not establish either special circumstances or lack of intention to abandon the mark. Ex parte Kelley-How-Thomson Co., supra.
- Use of Mark in Another Form. Use of a mark as an essential part of a materially different composite mark does not excuse the failure to use the mark at issue. In re Continental Distilling Corp ., 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958).
Late trademark renewal: 6-month grace period
If the above post-registration deadlines are missed, a registration owner has a 6-month grace period to file the maintenance/renewal documents along with the surcharge fee.
Need to renew a trademark registration?
Reach out to patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you maintain or renew your trademark registration.
