Does A Trademark Expire?

Does a trademark expire?

Does A Trademark Expire?

A utility patent lasts for 20 years, while a design patent lasts for 15 years. Unlike patents, trademarks can last indefinitely and do not expire.

Trademarks involve no exchange of information for exclusivity but indicate the source of a service or product. That is why customers will come across a product and associate it as coming from a specific source even if they don’t know the manufacturer’s name. Trademarks also help customers identify products bearing a specific brand as genuine, premier-quality products, not knockoffs manufactured by a competitor. Therefore, unlike a patent, a trademark is tied to the selling of goods and services, not a government allowed monopoly over an invention.

Succinctly put, trademark rights continue to be enforceable for as long as the company continues to sell the products and services connected to the mark.

 

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Length of a Trademark Registration

Any business or company that is an owner of a federal trademark registration will do well not to assume that the registration will last forever automatically. The United States Patent and Trademark Office (USPTO) requires that you adhere to certain post-registration and maintenance requirements.

As long as they are adhered to, these maintenance requirements will keep your trademark registration alive. In this particular context think of it as a follow-up application providing to the USPTO proof of continued usage of the mark is associated with its declared goods or services.

Specific timelines apply to when you should meet these post-registration obligations to keep your trademark registration alive.

  • First maintenance, 5-6 years after the trademark registration date.
  • Second maintenance, 9-10 years after the trademark registration date
  • Every ten years after the second maintenance

A 6-month grace period usually applies for these deadlines, but additional fees will be required for using the grace period so you may want to keep that in mind when meeting your post-registration obligations.

You can check or verify your trademark registration status and review all the documents on record on the Trademark Status and Document Retrieval (TSDR) system. You will need your US trademark registration number but the information is easily locatable under the “maintenance” tab.

Best Practices for Trademark Registration Renewals

There are common pitfalls and mistakes that business owners face and make when renewing or keeping alive the company’s trademark registration. Given the high stakes involved, it is best to be extra careful, and as may be necessary, consult with an intellectual rights expert on the best practices.

When renewing your registration, if the trademark registration contains several goods or services, ensure that you check to see if the mark is used on every good or service listed. You will be required to provide specimens of use to serve as proof of continued use for each class and its associated services or goods listed in the trademark registration.

If you have ceased selling any products or services listed in the trademark registration, ensure that you delete these items from the registration when you file your trademark registration renewal or maintenance documents. You will be putting your entire registration in jeopardy should you fail to be proactive about deleting these items. Your trademark registration may be challenged on the premise that it contains unused goods and services.

It can also make sense to file separate applications for different services and goods, even when the same trademark is being used on all of them. This strategy will ensure that the lapse, or consequent renewal of one product under the mark, will not affect the registration of the mark on other products.

Updating ownership information is also important. The current business owner must file the renewal documents, and if this is not the case, the documents may be turned down and your registration canceled.

What to Expect

After filing the required documents, your application for renewal will be reviewed by a trademark examiner in the USPTO’s Post Registration Division. You can typically expect to hear back within a month or two or filing your application.

If your application is accepted and successful, you will be notified by a Notice of Acceptance and/or Renewal. On the other hand, if the application is unsuccessful, then you will receive an Office Action.

In the case of an unsuccessful renewal application, the USPTO will highlight the reasons for your application being turned down and the remedies that are available to you in the Office Action. You have six months after getting the Office Action or up to the end of the relevant filing period to respond.

You are required to fill out and submit a Post Registration Response to Office Action form in response to the office action if your trademark renewal is not successful. Failure to respond accordingly will result in the cancellation or expiration of your trademark registration.

Be Proactive

As outlined, unlike patent maintenance fees, there are concrete steps that much be taken to renew a trademark. Avoid the common pitfalls, be deliberate about adhering to the best practices outlined to ensure that your trademark registration is alive, and consult our team of intellectual property attorneys for advice on trademark registration for your business.