Do you know how long a Trademark is valid? (image courtesy of UNSPLASH, photo credit: Jon Tyson)

How Long Does a Trademark Last?

If you are an entrepreneur, small/medium business owner, content creator, or founder, you likely know that your "brand" is one of the most important assets that needs to be protected.  You have probably heard about trademarks, and know that the process is undertaken via the Trademark side of the USPTO, and that, though technical in nature, it can be undertaken without an attorney.  But, do you know how long a trademark lasts?  More importantly, do you know what if anything needs to be done by you to keep that trademark registration valid?  If the answer is "I don't know" - don't worry, because most people do not know the answer.  If you would like to find out, this article will assist you. 

Understanding Trademark Duration - the Process

When talking about "duration" it is important to first understand the trademark application/registration process. Filing an application at the USPTO is only the first step in the process, which (at present) is averaging 14+ months from the filing date of the application to a final, dispositive decision.  After you file a trademark application, these are the steps to expect to encounter:

a. EXAMINATION - After several months your application will be assigned to a USPTO Examining Attorney.  They will take a look at the application and make sure that there are no conflicts with existing registrations or any other reasons why your application should be refused/rejected.  

b. OFFICE ACTION ('Non-Final Refusal') - If the USPTO Examining Attorney finds any problems with your application, they will issue an Office Action ('Non-Final Refusal').  At that time you will get 3 months to address that deficiency or problem.

c. PUBLICATION FOR OPPOSITION - If an application gets based the Examination phase (either without an Office Action or by successfully overcoming an Office Action), it will be published in the Official Gazette for a 30-day period to allow anyone to file any 3rd party objections to it being approved.

d. NOTICE OF ALLOWANCE / NOTICE OF REGISTRATION - If an application does not encounter any opposition at publication, after several weeks it will get a Notice of Allowance (if filed as an Intent to use basis) or a Notice of Registration (if filed on an already in use basis).  A Notice of Allowance means you get 6 months to prove actual use.  A Notice of Registration, as the name suggests, means you have successfully registered your trademark.

e) STATEMENT OF USE  - Again, if the application was filed on an Intent-to-Use basis, you will need to file a Statement of Use within 6-months, or seek to extend that time period for another 6-months (at a fee).

Failure to adhere to deadlines or requirements at any of the above phases can result in your application being abandoned, in which case the application will never attain status as a Registered Trademark, and thus the "duration" question is moot.  Many "Do it Yourself" filers will encounter problems at any of the above phases, which become fatal to their hopes of registration.  Sadly, very often, a Trademark Attorney could easily (or with some effort) salvage the application over that hurdle.  That is a good reason why it is always advisable to retain a trademark attorney.  

Understanding Trademark Duration - Maintenance

After an application matures to registration, you get a certificate and deserve congratulations.  However, that is not the ultimate "end" of the process, though many people mistakenly believe it to be so.  In fact, trademark registrations need to adhere to maintenance schedules (which are identified online at the TSDR database on the USPTO site, and the subject of a reminder email from the USPTO one year prior).  Since the USPTO will email a 1-year reminder, it is critical to ensure that the email that is associated with the registration is kept current.  All too often, successful business owners who attain a registration will later lose that registration because they do not know that they must take additional steps to maintain their registration and/or do not receive or understand the reminder email.  

Key Renewal Milestones

Trademark Maintenance is a key consideration.  If you comply with the maintenance requirements, your trademark can last forever.  But if you fail to maintain your trademark registration the proper way, you could lose it after 6 years (and 6 months).  When talking about maintenance, it is in essence renewal of the Trademark.  Here are the important milestones for maintenance/renewal.

• Between the 5th and 6th Year: Between the 5th and 6th anniversary of the date on your registration certificate, you must file your first renewal documentation (called a "Section 8 Declaration").  You will get an email reminder from the USPTO on the 5th anniversary, and can file your Section 8 Declaration any time from that date until the 6th Anniversary date.  The Section 8 Declaration consists of a form submitted to the USPTO, along with a specimen proving continued use (for each class of registered goods/services) and a filing fee (currently $225 per class).  If any of the goods/services are no longer being used, you can either delete them (in which case you lose the protection for that class) OR file a statement of excused non-use.  Failure to file the appropriate documentation (or answer the questions) will result in your trademark registration eventually being canceled!  Quite a large number of "Do it Yourself" applicants will lose their trademark at this time, because they did not know of the requirement, and fail to file maintenance documentation by the deadline.

• Six-Month Grace period: If you do not make your Section 8 filing by the 6th year anniversary of your registration, all hope is not lost!  The USPTO automatically gives a 6-month grace period for you to file "late" (with an additional filing fee as a sort of penalty).  You do not have to file a request for this 6 month grace period.  It is, however, crucial that you do not miss this grace period, as there are NO further extensions possible. At this time, the additional filing fee (ie. penalty) is $100 per class of good/service being renewed.

• Between the 9th and 10th Year: Your next maintenance deadline to know about is between the 9th and 10th anniversaries of the date on your registration certificate.  Again, you should receive an email reminder on the 9th anniversary, which gives you one full year to make the necessary filings.  At that time, you will need to file a Section 8 declaration and Section 9 (application for renewal) to renew the registration.  Again, you will be required to submit a form, a proper specimen evidencing continued use for each good/service registered, and a filing fee (currently $525 per class).  As with the prior period, you can delete goods/services no longer in use OR can file seeking excusable non-use.  Failure to file the appropriate documentation (or answer the questions) will result in your trademark registration eventually being canceled!

• Six-Month Grace period: Again,If you do not make your combined Section 8 and 9 filing by the 10th year anniversary of your registration, all hope is not lost!  The USPTO automatically gives a 6-month grace period for you to file "late" (with an additional filing fee as a sort of penalty).  You do not have to file a request for this 6 month grace period.  It is, however, crucial that you do not miss this grace period, as there are NO further extensions possible. At this time, the additional filing fee (ie. penalty) is $100 per class of good/service being renewed (per each of the Sec 8 and Sec 9 filings).

• Every 10th Anniversary Thereafter: Thereafter, in order to keep your trademark registration in good standing, you will need to file a Combined Section 8 and Section 9 document (with an acceptable specimen and filing fee) upon every 10-year anniversary.  Again, failure to do so will result in the cancellation of your registration.

• Six-Month Grace period: Again,If you do not make your combined Section 8 and 9 filing by any of the successive 10-year anniversaries of your registration, the USPTO automatically gives a 6-month grace period for you to file "late" (with an additional filing fee as a sort of penalty).  You do not have to file a request for this 6 month grace period.  It is, however, crucial that you do not miss this grace period, as there are NO further extensions possible. At this time, the additional filing fee (ie. penalty) is $100 per class of good/service being renewed (per each of the Sec 8 and Sec 9 filings).

As you can see, keeping your trademark registration valid is an ongoing process with very strict deadlines and requirements.  Trademark lawyers not only know how to successfully prepare and file the documentation, they also invariably have one or more docketting tools employed to keep them (and therefore, also their clients) apprised of these deadlines long in advance. It is for these reasons that engaging an experienced trademark attorney is an invaluable investment for anyone with a trademark application or registration.  

Ready to Protect Your Brand?

Understanding the trademark process, including the maintenance/renewal requirements, is essential to protecting your brand.  If the foregoing steps are performed correctly, a trademark registration can last indefinitely, making it a very valuable asset.  Having an experienced trademark attorney on your side helping you through every step of the application and maintenance/renewal process is critical, and a very sound investment to avoid headaches and potential heartache from the loss of your registration.  As a friendly reminder, our law office regularly assists clients across the entire US (and internationally) with the US trademark application and maintenance/renewal process.  In fact, many of our clients seek us out for the first time when their 5th/6th year renewals are due.  We will happily assist anyone and offer reasonable flat fee pricing options no matter what stage of the process you are at.  We also offer free initial consultations.  So be sure to contact our office to ensure that your trademark registrations are secure and safe for the long haul!

Call us for FREE consultation on your Trademark Matter!