Trademark Renewals

In many jurisdictions, the first trademark renewal must take place no more than 10 years after the mark's filing date or the 10-year anniversary of its registration date. The filing date schedule is the more common, observed in China, India, Japan, Brazil and most EU member states. The United States is the biggest jurisdiction to use the trademark registration anniversary as the renewal deadline. In either case, subsequent maintenance actions are due at 10-year intervals thereafter, with trademarks, unlike other IP assets, being indefinitely renewable.

Most jurisdictions also provide a post-deadline grace period during which you can still renew a trademark or service mark without a registration lapsing. This requires an additional fee on top of the standard renewal payment, but there are no other penalties. Grace periods are often six months and sometimes as long as 12, but be sure to check with the relevant trademark office well ahead of time.

Renewing a trademark can be uncomplicated compared to other IP-related procedures. If a trademark's ownership has not been transferred and the mark applies to the same goods and services as when originally registered, a significant number of jurisdictions require a renewal filing to include only a completed form and fee payment. However, if Nice Classification details have changed or there is a new owner, this should be reflected in the renewal filing and may entail additional paperwork.

The renewal process is somewhat more complex in jurisdictions that require declarations of use; these include the United States, Puerto Rico, Mexico, Cambodia and the Philippines.

• At a certain point after the filing or registration date, you must declare and prove your use of the mark in commerce or give an acceptable reason for non-use.
• Countries requiring use declarations may ask that they be submitted alongside each renewal filing as well.

Most countries that do not require proof or a declaration of use still allow their residents to file trademark cancellation requests after three-to-five years on the grounds of non-use. Should this occur, you or an authorized representative will have the opportunity to respond. Given the intricacies of such procedures, letting your trademark attorney take the reins will likely be the best course of action.

There are some circumstances in which trademarks that have lapsed and been declared abandoned can be reinstated, but you should not rely upon this possibility as a safety net. Generally speaking, revival of an abandoned trademark will at least be considered by many issuing offices if:

• An error directly attributable to the trademark office caused the mark's lapse, e.g., misplaced renewal filings, a premature notice of abandonment, etc.
• Circumstances beyond the trademark owner's control (i.e., not negligence) led to the lapse of the mark.

If you can furnish proof of an office's error, there is a strong chance that your trademark rights will be restored.

Unintentional lapses on the owner's part are a much less clear-cut affair. You must petition for reinstatement and provide a thorough explanation (and all the evidence you can gather) as to how the mark's abandonment was outside your control. These arguments are subject to the trademark regulator's interpretation — and possibly the opinion of just one individual in certain jurisdictions. For example, the director of the U.S. Patent and Trademark Office (USPTO) personally considers all petitions for revival of registered trademarks that have lapsed.

Reinstatement of a lapsed trademark should never be considered guaranteed, even in cases of office error, although legitimate mistakes are usually quickly redressed. No matter the situation, you must file your appeal within two months of receiving an office action signaling trademark abandonment.

If your trademark is not reinstated by the registering office, the only remaining options are to file a new trademark application or seek remedy through the appropriate court system. Considering the uncertainty of reinstatement, a refiling "just in case" may be recommended before someone else exploits the lapsed protection and takes over the name with another trademark filing.

Dennemeyer offers a truly holistic approach to the trademark renewal process. Even though it can sometimes be a more straightforward matter than the maintenance of patents or design rights, any mistake during a bid for trademark renewal — especially in a jurisdiction requiring declaration-of-use affidavits — can imperil the future of incredibly valuable IP assets.

As noted above, Dennemeyer's experts manage the necessities of renewal so that all steps involved are handled efficiently, in a timely manner and at a flat cost. In addition to renewals, our trademark legal services ensure that the optimal protection of your IP rights is always guaranteed. These include trademark monitoring, oppositions against conflicting trademark filings, anti-counterfeiting efforts, infringement litigation, recordals, defense against illegitimate oppositions or infringement claims and more.