Trademark Renewal

Get in touch to obtain information about the trademark renewal process, our services, and fees associated therewith.

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The trademark renewal process occurs after the mark registers on either the Principal or Supplemental Register.  Generally, the USPTO will require that the trademark owner formally declare that it is still using the mark in commerce and thus the USPTO’s registration of that mark should be maintained.  The trademark renewal process is periodic: first, between the 5th and 6th year anniversaries of the mark’s registration and thereafter, between each successive 9th and 10th year anniversaries.

The flowchart illustrates a very basic trademark renewal process.

FAQ

Do I have to File a Section 15 Affidavit of Incontestability?

No, a Section 15 Affidavit is an optional filing limited to marks on the principal register.  An owner cannot file a Section 15 Affidavit for marks on the supplemental register.  While a Section 15 Affidavit is an optional filing (and expense), it is advisable as it confers “conclusive evidence of the validity of the registered mark and its registration, of the registrant’s ownership of the mark, and of the owner’s exclusive right to use the registered mark in commerce, subject to certain defenses and exceptions.”  15 U.S.C. s 1115(b).

Can I Amend My Mark on the Supplement Register to Get Onto the Principal Register?

No.  If you want your mark to get onto the Principal Register, you will need to file a new application and (likely) attempt to get over the descriptiveness problem that landed your mark on the Supplemental Register in the first place, perhaps by introducing evidence of acquired distinctiveness (e.g., continuous use of the mark for a period of at least five years).

What Happens if I Do Not File these Renewal Documents and Pay the Associated Fees?

The mark’s registration will be cancelled and the owner will need to re-apply to re-acquire the cancelled registration.