Why don’t trademarks expire?

Trademarks differ from patents in at least one critical way: trademarks can last indefinitely while patents must expire. Keep in mind that patents involve an exchange of information (from inventors) for exclusivity (from government). Trademarks do not involve such an exchange.

Instead, trademarks serve to indicate the source of a product or service. When consumers see a particular brand, they generally will associate the product as originating from a particular source even if they don’t know the name of the company or manufacturer. Moreover, consumers will assume that products bearing a particular brand are not knockoffs made by a competitor, but rather are genuine products having a certain level of quality. Therefore, there is no reason why trademark rights must expire so long as a business continues to sell products or services in connection with its mark.

How long does a trademark registration last?

That being said, an owner of a federal trademark registration should not assume that the registration will automatically last forever. The USPTO places certain post-registration requirements (aka trademark maintenance) on registrants to keep their registration alive. You can think of such maintenance obligations as trademark renewals, although the term “renewal” in the trademark world has a very special technical meaning as discussed below.

In short, an owner of a trademark registration must take certain steps to maintain the registration during the following deadlines:

  1. 1st maintenance between 5th and 6th year anniversaries of the registration date;
  2. 2nd maintenance between 9th and 10th year anniversaries of the registration date; and
  3. every ten years thereafter (window opening one year prior).

If you’re tracking the status of a third party registration, you’ll want to keep track of not only the above deadlines, but also the 6-month grace period following the deadline.

Common pitfalls in renewing trademark registrations

Renewing a trademark registration requires vigilance especially if the registration contains several goods and/or services. Special care should be taken during the renewal/maintenance periods to check if the mark is currently being used on each and every item in the identification of goods/services. Proof of continued use (i.e., specimens of use) will need to be submitted for each class of goods or services recited in the registration.

If the trademark owner has ceased selling any products or services under the mark, those non-used items should be proactively deleted from the registration during the filing of the maintenance/renewal documents. Failure to do so may jeopardize the validity of the entire registration.

A decent argument can be made for filing separate applications for different goods and services even when the same mark is being used on all of them. That way, the renewal or lapse of one registration for a particular product will not affect the registrations of the same mark on other products.

Astute readers will recognize that a trademark renewal places certain burdens that are absent in patent renewals. An owner of a utility patent may simply pay a maintenance fee to keep a utility patent alive without having to show any use or licensing of the patent, and design patents do not have any renewal or maintenance fees.

 

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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.
Vic Lin

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