When do I have to renew my trademark? An explanation on how to renew your trademark registration.


When do I have to renew my trademark registration?


You have to renew your trademark registration during certain periods. The first trademark registration renewal is due between the 5th and 6th year following trademark registration.


If you miss this important deadline, your trademark can be cancelled without further notice.


Once a trademark is cancelled, the trademark owner must start the trademark process over again with a new trademark application and registration.


USPTO Trademark Renewal Timeline

  • 1st Renewal: The first renewal is due between the 5th and 6th year following the trademark registration. You must file this renewal and show that you are still using the trademark in business.

  • 2nd Renewal: The 2nd renewal can be filed 9 years from the date of the trademark registration. The deadline is by the 10th year of the trademark registration.

  • 3rd and Future Renewals: After the first two renewals, the subsequent trademark registration renewals are due every 10 years after the second renewal.

Trademark Registration Renewal Forms


The trademark registration renewal forms are available on the USPTO's website. Each form has an accompanying fee that must be submitted with the form.


Declaration of Incontestability


You may also file a Declaration of Incontestability with your first trademark renewal.


According to the USPTO:


A Section 15 declaration of incontestability is a signed statement that the owner claims incontestable rights in a trademark and continuous use of the trademark for five years. Following the filing of a Section 15 declaration, the trademark becomes incontestable. Once a trademark is incontestable, various aspects of the registration cannot be challenged by third parties (such as the trademark’s validity). This declaration can only be filed for trademarks that are registered on the Principal Register.


This is not required, like the trademark renewal is required to maintain your trademark. However, there are benefits to filing a declaration of incontestability. The main benefit of an incontestable trademark is that it establishes the validity of the registered trademark and ownership of the same. This can save you legal fees by not having to prove this aspect in an infringement suit.


References:

https://www.uspto.gov/trademarks/maintain/keeping-your-registration-alive#Deadlines-for-filing-registration-maintenance-documents

https://www.uspto.gov/trademarks/maintain


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 trademarks and legal business protections.


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

www.mdgrlaw.com



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