Maintaining a Trademark

Keeping Your Trademark Protection in Force

The trademark process can be complex and time-consuming, with most applicants waiting 12-to-18 months to have their mark granted. It’s important to understand, though, that you won’t have the exclusive right to use or license the trademark forever; there are specific term limits to trademark protection. However, a mark may be renewed. To qualify for renewal, owever, you must meet specific criteria.

What Is the Term of Trademark Protection?

A registered trademark provides protection for a period of 10 years from the date of registration. A trademark may be renewed for an unlimited number of 10-year-periods (10 years at a time), provided you qualify for renewal.

What Are the Requirements for Maintaining Federal Trademark Protection?

First and foremost, you can keep your federal trademark protection only if you use the protected mark in commerce. You cannot register a mark simply to keep someone else from using it. In fact, when applying for trademark protection, you must provide proof of either actual use in commerce or an intent to use. Furthermore, you cannot let a trademark lie dormant for the entire 10-year period of protection. You must file:

• A declaration of use or excusable non-use with the U.S. Patent and Trademark Office (USPTO) between the 5th and 6th years after the date of registration; and
• A declaration of use or excusable non-use and an application for renewal of the trademark after the 9th anniversary of registration, but before expiration.

If a trademark is not in use at the time of the application for renewal, you may still seek renewal, but you must provide the USPTO with:

• A list of the goods or services with which the trademark has been used during the current 10-year period;
• The date of last use of the trademark in commerce;
• An estimated date when the trademark will be used again in commerce;
• A statement of the reasons why the trademark is not currently being used in commerce (e.g., the product is being retooled, a new production facility is being built, etc.); and
• The measures being taken to reestablish use of the mark in commerce.

Do You Still Need to Renew a Trademark If You Have a Declaration of Incontestability?

If you have continuously used a mark in commerce for at least five years, you can apply to the USPTO for a Declaration of Incontestability. If granted, it will be conclusive evidence of your exclusive right to use the trademark, as well as its validity. However, a Declaration of Incontestability won’t affect your obligation to file an application for renewal between the 9th and 10th years after registration. If you fail to timely file for renewal, you can lose your trademark protection.