What Happens After You Register your Mark?

So, the U.S. Patent and Trademark Office has registered your mark.  Congratulations! Your mark is now protected across all fifty states.  But did you know you can lose that protection? Trademark renewal can ensure that you keep your mark.

Did you know that you can lose trademark protection?

In this post, we examine what you must do after registration to avoid losing your trademark.

Avoid Losing your Mark: Trademark Renewal

First and foremost, you must continue using your mark to identify the source of your goods or services.  Failure to do so can result in “abandonment.”  Abandonment occurs when you stop using your mark and you do not intend to use it again.  You are presumed to have abandoned your mark if you stop using it for three years.  Abandonment can be brought up as a defense if you try to enforce your mark against another party, or it can be the basis for a cancellation proceeding, where another party asks the USPTO to cancel your registration.  To avoid abandonment, continue using your mark for all the goods and services for which you have registered it.

Second, you must make sure to file your renewal applications on time.  Like the original application, the renewal application must include specimens showing how your mark is being used in commerce in connection with the goods or services for which it is registered. Of course, the USPTO charges fees for renewals, and failure to apply for renewal on time can result in cancellation of your mark.

The first renewal must be filed in the year before the sixth anniversary of the date your mark became registered.  This renewal should be combined with a “declaration of incontestability,” which secures certain additional benefits for your mark.  When combining the first renewal with the declaration of incontestability, the current fee is $200 per class.

Trademark Renewal can prevent a variety of problems.

Finally subsequent renewals must be filed in the year before every tenth anniversary of the date your mark was registered.  The second renewal is due between years 9 and 10, and renewals are due every ten years after that.  The fees for these subsequent renewals are significantly greater than for initial renewals– currently, $500 per class.

Other Ways to Lose your Mark

There are a variety of other ways that a mark can inadvertently become abandoned.  Naked licensing, failure to police, and even popularity of your mark (to the point where it becomes generic) can all cause problems for a mark.  If you need help, contact us with any questions about your trademarks or intellectual property.

Law 4 Small Business, P.C. (L4SB). A little law now can save a lot later.

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