Do trademark registrations expire? Yes, trademarks can expire.
Registering a trademark is a lengthy process that requires diligence and efficiency. Paying attention to key details and filing at an early date ensures that the application will be processed before those of potential competitors.
But, what happens after a trademark is registered? Is a trademark at a risk of expiring? These are the questions we will answer in this article.
After a trademark is registered, the USPTO recommends that a trademark owner follow certain steps in order “to maintain that registration and keep it alive.”
First, and most important, is that the trademark owner continually uses their registered trademark for business. This typically means that goods and services associated with this particular trademark should be regularly bought and sold.
Second, the owner is required to submit certain kinds of documentation on specified dates in order to indicate that the trademark is still in use. The USPTO warns that, if the owner fails to do so, “registration will be cancelled or will expire, or [the] extension of protection from the US will be invalidated.” These consequences would mean that the trademark owner would lose their rights and protections to this mark, and it would no longer be endowed with protections from theft. The USPTO makes it clear that there are relatively no exceptions when it comes to timely filing for proof of continual use; lateness results in negative consequences.
Proof of continual use comes in the form of a Required Maintenance Document which, as previously stated, must be submitted every certain amount of years. This form declares that the registered trademark is in use for business activities, and asks the USPTO to continue to protect it for this reason. The trademark owner can submit a specimen (a sample product showing the trademark) to demonstrate use. The submitted form and specimen will be analyzed by the USPTO to check for validity and verifiability.
If the continual use of the trademark in commerce can be verified, then the protection will be extended. If not, the trademark will undergo auditing, lose its protections, and these items will be deleted from formal registries for a certain fee. A trademark owner who has inactive goods “needs to file a Section 7 Request to delete these items” and for this there is no charge, so long as deletion is requested prior to the submission of any deadline.
In conclusion, following these steps will ensure that the trademark continues to receive protection from the USPTO. Continuously use the mark in commerce and provide proof to the USPTO on the deadlines below. The submission of Required Maintenance Documents is what allows the USPTO to validate continual use of the trademark. If the trademark falls out of use, or the trademark owner fails to prove to the USPTO that the mark is in use, or if paperwork lacks timely filing, then the government can remove protections placed upon the mark.
Trademarks can expire, but only under certain conditions. One would do best to avoid this type of expiration by making sure to meet all necessary guidelines and following the procedures outlined by the US government.
According to the USPTO: You must file the requisite documents within these deadlines to keep your trademark registration alive:
Between the fifth and sixth years after the registration date File a Declaration of Use and/or Excusable Nonuse under section 8
Between the ninth and 10th years after the registration date File the first Declaration of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9
Every 10 years after that (between the 19th and 20th years, 29th and 30th years, etc.) File subsequent Declarations of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9
For all other questions regarding trademarks, proof of use, and expiration, please do not hesitate to contact MDGR LAW. We are happy to provide assistance with this process!
Research assistance by Jace Sapenter-Nath
Melissa D. Goolsarran Ramnauth, Esq. is a trademark and business attorney. She writes articles on trademark law. She also writes weekly articles on West Indian history and politics to raise awareness of the past, and educate the Caribbean diaspora on the need for legal contracts and trademarks.
She graduated magna cum laude from the University of Miami with a Bachelor of Arts degree in Political Science, a minor degree in History that focused on the slavery and indentured servitude eras, a minor degree in Criminology, and a Juris Doctor degree.
MDGR Law, P.A.
(754) 800-4481
melissa@mdgrlaw.com