Renewal of Trademark Registrations
A trademark registration expires after ten years. If you wish to keep your trademark registration active, you must file an Application for Renewal of your registration under § 9 (See TMEP § 1606 ) before the expiration of this ten year period.
The window for filing this Renewal opens one year before expiration of the mark and a Renewal may also be filed within six months after the expiration of your mark (the “grace period”) with an additional fee. Thus, you may file a Renewal any time between nine and ten years after registration, or between ten and ten and a half years after registration with payment of the additional fee. A declaration or affidavit of continued use under § 8 must also be filed within the same period as the Application for Renewal of registration (See TMEP § 1604).
Each Renewal extends the life of the registration for ten years, thus a new Renewal must be filed before the end of twenty years after registration, thirty years, etc., if you do not wish for your registration to expire.
Reinstating a Trademark Registration
If you forget about the renewal and miss the ten-and-a-half year deadline, your registration will expire. In that case, there is no way to revive or reinstate it. Your registration is simply gone and if you want another one, you will have to file a new application and undergo examination once again. Examiners are not bound by previous registration decisions of the Trademark Office, so you could encounter some difficulty with your new application.
The only time that a trademark registration can be reinstated once it has expired for failure to file a renewal application or declaration of use is if you did file the required documents and the expiration was due to a Trademark Office error (See TMEP § 1712.02). If, for example, the Trademark Office lost the paperwork, you would be able to reinstate your registration.
In that case, a request for reinstatement must be filed within two months of receiving notice that your registration was canceled.
So, be careful not to miss any deadlines! The Trademark Office will not warn you when they are approaching. Consider using a trademark attorney or trademark management company to keep track of the deadlines for you.
{ 5 comments… read them below or add one }
If you miss the deadline (January 28, 2010) to file an opposition against a trademark that violates yours, are you totally out of luck? I can’t afford to engage my trademark atty, who I love, thanks to tough times in this economy and I’m trying to do it myself. Have the form to file a notice of opposition – just not sure if I can get an extension.
Amy,
Unfortunately, once you miss the deadline the time for filing an opposition cannot be extended or waived. See TMEP 1503.03
However, once the registration is granted you can petition to cancel the registration, which is substantially similar to opposing the application. If you have any specific questions about your situation, feel free to contact me directly.
Thanks, you’re a dear. If you have any love advice questions, I’d be happy to answer those!
I have a trademark that has not shown use yet. It runs out May 1, and this is our last extension. Do we just start over and re-apply or are we out of luck?
It is for a restaurant chain. I have an interested party who could do a contract with us for intent to use the name but does that count as showing use? His business won’t be open until several months past our deadline.
Thom,
First of all let me say I am excited to have the writer of “Redneck Yacht Club” commenting on my blog! Anyway, once you use up all your extensions, if you want to keep an application active you unfortunately have to file a new application. If you know you are not going to meet the deadline, you could file your new application even before your existing one expires. Hopefully no confusingly similar marks have been applied for since your original application was filed.
If you are trying to use the trademark before the deadline, keep in mind the requirements for use in commerce. If your trademark is for services such as restaurant services, use requires advertisement of the listed services in connection with the mark and the services must be available now.
If your trademark is for a physical product (“goods”), the trademark needs to be on the goods or their packaging, tags/labels, etc., and the goods have to be shipped across state lines for sale. Selling the goods over the Internet and using the mark on the website qualifies under certain circumstances as well.
If you have any question about whether your use is sufficient, you should contact an attorney. These are general guidelines and I have no knowledge of your particular situation, so of course I cannot give you actual legal advice over my blog.