The protections and benefits of a registered U.S. trademark come with a series of responsibilities of ownership. One of your most important responsibilities is to maintain and renew your trademark at the required intervals set by the United States Patent & Trademark Office.
Upon the initial registration of your trademark, it is important to make note of the first renewal date which is five (5) years after the date of registration. The tricky element here is the length of time. Since this is not a yearly requirement it is easy to forget when your renewal is due. Moreover, the USPTO does not send reminders when your renewal is due. It is your responsibility to know the renewal deadline and meet it. If you miss renewal deadline your trademark registration will be cancelled without notice. If your trademark is cancelled, you must go through the trademark registration process all over again in order to attempt to reclaim the rights of a federal registration.
In order to prevent such situations, let’s look at the “how” and “why” of trademark renewal in the United States.
U.S. Trademark Renewal Timeline
The dates of renewal are among the most important things for you to remember with your USA trademark. Missing these dates leads directly to trademark cancellation – no questions asked. Let’s lay out the trademark renewal schedule, and what exactly you need to do on these dates.
First renewal filing: Due 5 years from the anniversary date (date of initial registration).
Your first trademark maintenance and renewal action will be to file a statement of continued use during the fifth year of your ownership of the mark (meaning that you may file up until the sixth year from your anniversary date, but due to the importance of trademark renewal and maintenance, the earlier you file, the better). This filing is a binding statement that your mark is in active use, and will include a trademark specimen illustrating that use in commerce (identical to the one you filed with your initial application, if you are still using your mark in the same way).
Your first renewal filing will also include other necessary information about the trademark owner, as well as the applicable USPTO fee.
Second renewal filing: Due nine years from the anniversary date (date of initial registration)
This second filing constitutes your first full U.S. trademark renewal (as opposed to the maintenance/statement of use of the five-year filing). You will again file a statement and illustration of continued use in commerce, along with a separate renewal form and fee, which will extend the life of your trademark an additional ten years.
This renewal is due over the course of the ninth year of ownership – that is, between the ninth and tenth anniversary of your date of registration. Again, as with the first filing, the earlier you file, the better, in order to prevent any potential issues beyond your control that may lead to the cancellation of your mark.
Third and subsequent renewal filings: Every ten years thereafter
You are entitled to ownership of your trademark indefinitely, provided that you continue using your trademark in commerce and keep up with the necessary renewals every 10 years after that second filing. Each subsequent filing will continue to require statements and proof of continued use – you cannot block others from using a trademark that you own but aren’t using, and your mark will be weakened and potentially eventually cancelled without adequate use and defense of your mark throughout its life.
Why Do I Need to Renew My U.S. Trademark?
The USPTO provides broad and vigorous protections in conjunction with a registered trademark – the renewal process, in part, maintains the integrity of the trademark system and ensures that the benefits of a mark are being used as intended. This means active use, proper use, active policing of the mark, defense against mark dilution or weakening. There is a balance between affording protection to the rightful owner, and, ensuring the freedom of competition in the marketplace by safeguarding against “hoarding” or otherwise blocking others from using inactive marks. The renewal schedule is critical to ensuring that trademarks no longer being used in commerce become available for others to put to use.
Other Notes on USA Trademark Renewal
If you hold trademarks for a product or service in several countries, it’s important to make note of the renewal protocol for each. U.S. trademark renewal may have difference processes and due dates than other countries. This holds true even if you’ve filed through the Madrid Protocol, and whether you are based in the U.S. or elsewhere. Madrid provides for streamlined trademark applications, but the responsibility for remembering and complying with renewal deadlines and requirements for each trademark issuing body lies with you.