Maintaining and Renewing Your Trademark

Once your trademark is registered, it’s essential to maintain it to ensure continued protection.

Catherine Cavella, ESQ.

Ongoing Responsibilities

Once your trademark is registered, it’s essential to maintain it to ensure continued protection:

• Use in Commerce: You must actively use your trademark in commerce for the goods and services for which it is registered. Non-use for an extended period (typically three years) can result in cancellation by the USPTO or a third-party.
• Record-Keeping: Keep detailed records of how and where your trademark is used. This documentation can be crucial if you need to prove use in legal proceedings.

USPTO Renewal Process

Trademark registrations require periodic renewal to remain in force:

• Initial Renewal: The first renewal is due between the 5th and 6th year after registration. You must file a Section 8 Declaration of Use, confirming that the trademark is still in use. 
  • At this time you should also file a Section 15 Affidavit of Inconstability to “ironclad” your registration against certain kinds of attacks in the future.
  • If you fail to file the Section 15 Affidavit before year 6, your application can never become incontestable and will remain vulnerable to future attacks on all grounds.
  • Be sure you submit adequate Specimens of Use for all goods and services on the Certificate to ensure your renewal is accepted by the USPTO and your mark remains in force.
• Subsequent Renewals: After the initial renewal, you must renew your trademark every 10 years. This involves filing a combined Section 8 Declaration of Use and Section 9 Application for Renewal.
  • Be sure you submit adequate Specimens of Use for all goods and services on the Certificate to ensure your renewal is accepted by the USPTO and your mark remains in force.
• Grace Period: If you miss the renewal deadline, there’s a six-month grace period during which you can still renew your trademark, though additional fees apply.
  • There is no grace period for the Section 15 Affidavit, however. 

Updating Your Trademark

Over time, you may need to update your trademark to reflect changes in your business:

• Changes in Logo or Name: If you modify your logo or business name, you must file a new trademark application for the updated mark.
• Changes in Use: If you stop using the mark for some of your goods or services , you should delete them from the next renewal to avoid penalties. If you start using the mark for new goods or services, you will need to file a new trademark application covering the new goods — you cannot add to an existing registration or application.
• Ownership Changes: If ownership of the trademark changes (e.g., due to a merger or sale), you must record the change with the USPTO.

International Considerations

If you do business internationally, consider protecting your trademark in other countries:

• Madrid Protocol: This international treaty allows you to seek trademark protection in multiple countries with a single application, based on your US trademark application or registration.
• National Applications: Alternatively, you can file separate trademark applications in each country where you seek protection.
• Prevent International Conflicts:  Trademark registration is first-come, first-served. If you build a valuable brand in the U.S. and delay too  much in reserving your trademark in other countries in which you plan to expand, you may find yourself needing to pay a premium to someone who got there first. Just ask the founder of Pinterest. Many countries, unlike the US, allow registration for 5 years without use of the mark. 

Case Study: Coca-Cola

Coca-Cola is a prime example of diligent trademark maintenance. The company has consistently used and renewed its trademarks for over a century, ensuring that its brand remains protected worldwide. Coca-Cola also updates its trademarks as needed, such as when introducing new product variations or entering new markets. As a result, it has hundreds of valuable trademarks holding the value of its goodwill.

Example: Small Business Renewal

Consider a small fashion boutique, “Chic Threads,” that registered its trademark five years ago. To maintain protection, Chic Threads files a Section 8 Declaration of Use and Section 15 Affidavit of Incontestability, along with evidence of continued use of the mark in commerce for the claimed services. By staying on top of renewal deadlines, Chic Threads ensures its brand remains protected and recognizable, maintains its early national priority date, prevents others from adopting similar brands, and becomes “incontestable,” giving it extra power for enforcement. 

Investors in Chic Threads appreciate leadership’s investment in its brand, which is a key asset of the company as it grows. When the owners of Chic Threads decide to sell, their portfolio of strong and well-maintained trademarks allow them to negotiate a premium price; the buyers are happy to pay because they get the benefit of the well-protected brand, which drives loyal customers to the store and keeps copycats at bay online and in real life, without the need for expensive litigation.

Conclusion

Maintaining and renewing your trademark is crucial for long-term brand protection. By understanding your ongoing responsibilities, the renewal process, and the need for updates, you can ensure your trademark remains valid and enforceable.