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Sustain Your Identity—Renew Your Trademark

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, after that, between each successive 9th and 10th year anniversaries.

With a legacy of over two decades, AU LLC stands as a paramount force in legal excellence, particularly in the realm of trademark law. Based in the vibrant city of Chicago, our distinguished team of attorneys has been providing unparalleled skill and guidance in trademark renewal services, ensuring the continued protection of our clients’ valuable assets.

Answering Your Trademark Renewal Questions

As you embark on the journey of trademark renewal, it’s natural to have questions about the intricate process and its implications for your brand. Here are answers to some of the questions we receive most often:

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 overcome 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 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 canceled, and the owner will need to re-apply to re-acquire the canceled registration.

What happens if I let my trademark expire?

If your trademark expires, it will no longer stand and offer you any type of intellectual property protection. The government will consider the trademark to have been abandoned. Another individual or a company that wants to use that trademark would then have the ability to register it as their own.

This does not happen immediately, however. You will be given a six-month grace period. Even after it officially becomes abandoned, the government will not post notice of this change for two more months. But this still means that you may only have eight months before you lose your trademark and the protection it offers, so it’s very important to know exactly what legal steps to take.

How often do I need to renew my trademark?

As a general rule, you have to renew a trademark once per decade. It is only granted for the next 10 years. If you do not renew it, then it may be considered abandoned, as noted above.

Another important step to take is to file the Declaration Of Use paperwork. You have to do this after you have had the trademark for five years. This declaration shows that you are in fact still using it. So your trademark may not have expired because you haven’t yet reached that 10-year deadline, but there are still steps you’ll need to take to keep your protections in place.

Can I revive a dead trademark?

Yes, in some cases, you may be able to provide the reason why you abandoned the trademark and it may then be revived. But not all reasons would be accepted. For example, maybe you claim that a USPTO mistake was the reason for the abandonment, or perhaps you did send in the correct response, but your paperwork was incomplete. You’d simply like to rectify the mistake.

But this doesn’t mean that your request will always be granted, and this is still a complicated situation, which is why it’s so crucial to have an experienced legal professional at your side.

Ensuring The Longevity Of Your Trademark

Neglecting the trademark renewal process can jeopardize your brand’s hard-earned recognition and protection. Our experienced team at AU LLC is ready to guide you through the intricacies of trademark renewal. Contact us today at 312-900-9426 or complete our online form for personalized assistance.