An ornate clock with the words Time to Renew on its faceTrademarks can last forever.
 Unlike patents and copyrights, trademarks are not limited to a set term of years.  That being said, a common misconception concerning trademarks is that once registered they last forever and do not need to be renewed.  This is not the case.  All trademark holders must realize that to keep their federal trademarks registered they must both continue to use them in interstate commerce and file the proper renewal paperwork at periodic intervals prescribed by law.

As such, this article provides an overview of important renewal information so that trademark owners can keep their federal trademarks registered and their brands protected throughout the United States.

5 / 6 Year Renewal: A U.S. Federal trademark registration must first be renewed between the 5th and 6th year anniversaries of the trademark’s registration.  The registration is renewed by filing A §8 Declaration of Continued Use.  A §8 Declaration of Continued Use is a sworn statement, filed by the owner of a registration, that the mark is still in use in commerce. If the owner is no longer using the mark but intends to resume use thereof or has temporarily stopped using the trademark a §8 Declaration of Excusable Non-use may be filed.

Accordingly, if your trademark registered on June 1, 2010 it must be renewed between June 1, 2015 and June 1, 2016.

5 / 6 Year Renewal Grace Period: However, if you fail to renew your trademark between the 5th and 6th anniversary of its registration don’t panic.  The law provides that you may still do so during a six-month grace period following the expiration of the initial renewal term.  Of note, additional fees will apply to renew your trademark during the grace period.

Accordingly, if your trademark registered on June 1, 2010 your 5 / 6 year renewal period closes on June 1, 2016.  However, the trademark may still be renewed under the 6-month grace period until December 1, 2016 (6 months past June 1, 2016).

10 Year Renewal: Following the 5 / 6 year renewal a trademark must also be renewed on or about every 10th anniversary of its registration.  The registration is renewed by filing a §8 Declaration of Continued Use as well as a §9 Application for Renewal.

Accordingly, if your trademark registered on June 1, 2010 it must be renewed between June 1, 2019 and June 1, 2020.  Of note, the ten year renewal requirement is currently perpetual.  In other words, you can keep your trademark registered for as long as it is kept in use, but you must renew it every 10 years.  Returning to our example, if your trademark registered on June 1, 2010 it must be renewed between June 1, 2019 and June 1, 2020.  Likewise, it must be renewed between June 1, 2029 and June 1, 2030 and so on and so forth.

10 Year Renewal Grace Period: If you fail to renew your trademark between the 9th and 10th anniversary of its registration or any subsequent like period again don’t panic.  The law provides that you may still do so during a six-month grace period following the expiration of the renewal term.  As before, additional fees apply to renew your trademark during the grace period.  Accordingly, if your trademark registered on June 1, 2010 your 9 / 10 year renewal period closes on June 1, 2020. However, the trademark may still be renewed under the 6-month grace period until December 1, 2020 (6 months past June 1, 2020).

Effects of Failing to Renew: If you fail to renew your trademark during the periods set forth above the registration will be cancelled by the U.S. Patent and Trademark Office stripping the trademark of the benefits afforded to federally registered trademarks in the United States.

As always, if you have any questions regarding this or any related topics Contact Us at TTC Business Solutions.