Trademark registration is not a requirement for a trademark to be considered valid. That said, federal registration offers mark owners many advantages including the following:
The ability to file their U.S. registration with the U.S. Customs Service, thereby preventing the importation of any infringing goods from other countries
The ability to bring an action in federal court concerning the mark
The use of U.S. registration as a foundation for obtaining registration in other countries
A legal presumption of ownership of the mark, which comes with exclusive right to use the mark nationwide in connection with or on goods and services listed in the registration document
Constructive notice to the public of the registrant’s claim of mark ownership
Since federal registration offers superior protection, many mark owners choose to complete the registration process. Still, mark owners need to be aware that, to retain their rights indefinitely, trademark registration requires periodic renewal.
When Must Trademarks be Renewed?
After the application is submitted to the USPTO, it takes about 9 – 12 months for the application to complete the registration process. Five years after the registration is completed, a statement of use or excusable non-use must be submitted to the USPTO. This statement must be submitted again after 10 years of the trademark’s registration, along with an Application for Renewal.
These two forms must be completed and turned in every 10 years. Provided that these periodic filings are made, the trademark registration may last for as long as the owner of the mark continues to properly use the mark.
If the statement and application are at any time not filed, the USPTO will cancel the registration on either the Principal or Supplemental Register. There is a six-month grace period in which these documents can be turned in and accepted, as long as they are submitted with the prescribed late fee.
Trademark registrations and renewals can be complicated and time consuming. If you need assistance with your registration or renewal, please feel free to contact me. I’d be happy to help.
Kelly G. Swartz is a patent attorney licensed to practice in front of the United States Patent and Trademark Office and in the state of Florida. She limits her practice to intellectual property law including patent, trademark, copyright, and trade secrets.