If your US trademark registration expires, it will be because you failed to take the proper steps to maintain it. (Sorry, but it’s true!)
A trademark registration expires if its use in interstate commerce is not periodically asserted with the filing of a Statement of Use document with the US Patent and Trademark Office (USPTO). (It is the USPTO that maintains the Federal trademark registration database.)
You must renew a trademark registration, in other words. This is in contrast to patent or copyright registrations. Patent and copyright registrations will remain valid for a fixed period of time, depending upon a variety of factors.
Trademark registration, on the other hand, expires if it is not longer in use in commerce.
Trademark Registrations Must Be Renewed
Why?
It is because trademark registration, unlike copyright or patent registration, exists in great part as a consumer protection safeguard.
Trademark registration does provide you exclusive use of your name, slogan, or logo. With a valid trademark registration, you can sue for infringement in Federal Court, it is true. You can also request the US Customs block the import of infringing goods.
It is a powerful brand protection tool that will enable your business to prosper, build value, and is functionally necessary for such options as franchising.
However, from the standpoint of the Federal government, its primary purpose is to ensure that American consumers know what they are buying—and from whom. A “trademark” is, by definition, a “mark” used “in trade.” That is, in commerce. If you don’t use it, you lose it.
Losing a trademark registration opens it for use by others.
A trademark registration expires when it is no longer in use. It also expires when you forget to file the Statement of Use to renew it by required deadlines.
We have written elsewhere on this trademark registration blog regarding the specifics of the trademark registration renewal requirement.
This Article now focuses on the question of what to do next if your trademark registration expires. It also focuses on the expiration of registered trademarks. There are many reasons why a trademark application will be abandoned before it is registered. That discussion is outside the scope of this Article.
When a Trademark Registration Expires: Next Steps
When your trademark registration expires, you will have a few specific options available to you—but only those options.
Petition to Revive the Expired Trademark Registration
If your trademark registration expires due to a missed deadline, mistake, or general inadvertence, you may still be able to revive it. That is, you can raise it from the dead.
A Petition to Revive the expired trademark registration is filed with the USPTO’s Director of Trademarks to accomplish this.
However, this will require that the business or product name, logo, or slogan is still being used in interstate commerce. If you have ceased to use the mark in your marketing or branding efforts, then it belongs in the trademark graveyard.
Again, trademark registration is available only to those marks used to identify the source of a product or service transacted in interstate commerce.
If the reason you neglected your renewal deadline is that you aren’t fostering that business any longer, there will be no basis for petitioning to revive after your trademark registration expires.
How Does the Petition to Revive Work?
Timing is key in the Petition to Revive process.
Once you receive a Notice of Abandonment from the USPTO, you will have only 2 months to file a Petition to Revive the expired trademark registration.
If you did not receive that Notice of Abandonment, you will have a grace period of no more than 6 months from the date of abandonment to file the Petition. After 6 months, you will have no choice but to proceed to Option 2, below (re-filing a new trademark registration application),
The Petition to Revive is a USPTO form that will require you to provide:
- A statement verifying that the delay in filing your Statement of Use (renewal documentation) or any extension request was unintentional;
- A filing fee ($150.00 as of this writing);
- The Statement of Use you failed to file, as well as the separate Statement of Use filing fee;
- OR an extension request with that filing fee;
- OR a request to cancel the original Notice of Abandonment and the issuance of a new one if you didn’t receive it.
If you need to delete goods or services from your registration that are no longer in use, the process of petition to revive after your trademark registration expires will require additional information and steps as well.
6 Months After a Trademark Registration Expires
When 6 months have elapsed after a trademark registration expires, the likely required course of action, as noted, is simply to re-file a new application from scratch.
However, if some extraordinary situation other than neglect, lack of receipt of the Notice of Abandonment, or failure to properly calendar your renewal deadline is the reason your trademark registration expired, you can file a Petition to the USPTO Director of Trademarks.
You will need to provide a statement and evidence proving that extraordinary nature of your excuse, as well as yet another filing fee.
Don’t get your hopes up here. Think “I couldn’t do it, I was stranded on a desert island with just a kangaroo as dinner companion” in terms of what is and isn’t “extraordinary.”
Re-File a New Trademark Registration Application
Sometimes, when a trademark registration expires, what’s done is done. Too much time has passed, your reasons for missing the Statement of Use deadline were ordinary rather than extraordinary.
Whaddaya gonna do?
If you are still using the name, slogan, or logo in commerce, you will need to file a new trademark registration application.
The new application will have the same original dates of first use. However, it will have a new application filing date, naturally. This can be problematic if subsequent, similar, likely to confuse trademark registrations have been filed.
You may have prior use over those registrations, but their position ahead of your new, re-filed application on the USPTO register will cause you problems in your new registration approval process.
Contact a Michigan Trademark Attorney if Your Trademark Registration Expires
The bottom line is that, if your trademark registration expires, your best odds of reviving it is to consult an experienced trademark attorney.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios in all industries and in all states with trademark registration, trademark renewal, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration, Letter of Protest, or Opposition success.
Click the “Register Your Trademark” button below to schedule your initial consultation and to begin your brand protection journey.