One of the biggest problems that trademark owners encounter is unintentionally abandoning their registered marks. This happens when the owner fails to renew the necessary maintenance documents when they’re required. Losing your trademark could irreparably damage your business, so you don’t want to forget to file these maintenance documents.
To help you meet the deadlines, here are five things you need to understand about the U.S. Patent and Trademark Office (USPTO) trademark renewal documents and reminders.
1. Understand why you need to file trademark maintenance documents.
Filing trademark maintenance documents is important because it tells the USPTO that your mark is still in use. Under U.S. law, trademark rights (including federal registrations) can only be maintained for marks that are in commercial use.
Periodic maintenance filings help to maintain the integrity of the trademark register by freeing up abandoned and cancelled marks so they can be used by others in the marketplace.
2. Understand when you need to file trademark registration documents.
If you work with an intellectual property attorney who manages your intellectual property portfolio for you (including trademarks) on an ongoing basis, then the filing deadlines for maintenance documents are probably already part of a master calendar.
Unfortunately, most small to medium-sized businesses, startups, and entrepreneurs don’t have intellectual property portfolios maintained by intellectual property attorneys. That means you need to know when to file the appropriate documents in order to keep your trademark registration(s).
Trademark registration maintenance documents are required to be submitted to the USPTO at the following times:
- Between the 5th and 6th year after registration,
- Between the 9th and 10th year after registration, and
- Every 10 years thereafter for as long as the mark is in use in commerce (e.g., between the 19th and 20th year, between the 29th and 30th year, and so on).
All of the post-registration filing details are provided on the back of your official registration document. An example is provided in the image above.
3. Understand if and when you’ll receive trademark registration renewal reminders from the USPTO.
In January 2015, the USPTO began sending email reminders of upcoming post-registration maintenance filing deadlines. These reminders are only sent as a courtesy to owners who meet the following criteria:
- Have live registrations on the date the email is to be sent,
- Have provided valid email addresses to the USPTO, and
- Have given permission to the USPTO to send them email messages.
Email is the only way these reminders will be sent, and the USPTO will not follow up in any way if an email message is rejected or undeliverable. In other words, don’t rely 100% on receiving these reminder email messages.
You can read more about the USPTO courtesy email reminders of trademark registration maintenance filing deadlines on the USPTO website.
4. Understand if and when you’ll receive trademark registration renewal reminders from the attorney who originally filed your mark.
If an attorney prosecuted your trademark application and secured your registration, he or she won’t automatically warn you when maintenance documents are due. You’ll only receive warnings if you specifically hire the attorney to notify you or if he or she does it as a professional courtesy. Otherwise, representation of a trademark applicant by an attorney before the USPTO terminates when the mark is registered.
If you want your attorney to handle post-registration filings, you’ll need to engage him or her for those services and provide a new Power of Attorney authorizing him or her to represent you before the USPTO for post-registration matters.
Intellectual property attorneys who routinely handle trademark matters often maintain a master database of all of their clients’ applications and registrations and will docket these deadlines (i.e., list the deadlines in their case calendars). If the firm still represents you at the time a maintenance filing is due, they may send you a reminder notice as a professional courtesy.
In this case, be sure you keep your contact information up to date with the law firm so the notice gets to you. Again, this is considered a professional courtesy only, not an ethical duty.
5. Understand what happens if you miss the trademark renewal deadline.
It’s easy to miss a filing deadline when it only comes every five or 10 years. Even if you use an internal calendar system, there are a number of variables that can cause you to miss the deadlines. For example, people frequently change jobs and fail to notify another employee of long-term deadlines, calendaring systems change and some data isn’t transferred accurately, companies change law firms, and so on.
If you miss your deadline, including the grace period, and just realized that your registration expired or has been cancelled for failure to file a maintenance filing, it cannot be revived. You have to start over with a new application. Therefore, it is absolutely critical that you submit the appropriate renewal documents before the deadline arrives!
One of your responsibilities as a trademark owner is managing your registration. It’s your property, and the registration is your certificate of title to it. Whether you have one registration or 1,000 registrations, it is important to create and maintain a portfolio that includes all of the company’s trademark registrations.
If you do it yourself, be extremely careful to ensure it’s always up to date and deadlines are not missed, or you can work with an intellectual property attorney who will manage all aspects of your intellectual property portfolio so you’re always protected.
Most importantly, don’t rely on the USPTO reminder email messages. While it’s great that the USPTO sends the email reminders, there are many variables that could cause you not to receive them.