What happens when a trademark registration is not renewed?

Trademark registrations have strict time periods for renewal. In trademark vocabulary, the process of “renewing” a registered trademark is known as post-registration maintenance. The time period for maintaining a registration is typically a 1-year window that begins and ends on very strict dates. If try to file before this time period, you’re too early. If you file after this period, you’re late. Let’s look at your options when your trademark registration is not timely renewed.

What are your options if you are late in renewing your trademark registration?

Your options will depend on how much time has passed since the particular post-registration deadline that applies to your registration. If you are within six months of the trademark maintenance deadline, you may submit the post-registration documents and pay a USPTO surcharge fee in addition to the required fees.

If you are beyond the 6-month grace period, you may file a petition to revive your trademark registration if your delay was unintentional.

How can you revive a canceled trademark registration?

The USPTO will send a notice of cancellation or expiration. Within two months of the date of the cancellation/expiration notice, the registration owner must file a petition to revive with all the necessary requirements and fees. If more than two months have passed since the USPTO cancellation notice, a trademark owner will need to file a new application for the same mark.

What are risks or disadvantages of filing new trademark applications for your previously registered marks?

If your trademark registration has not been timely renewed, you lose the benefit of the earlier filing date. When you reapply for the same mark, you end up with a later filing date although your claimed first dates of use may still be the same. The disadvantage of a later filing date is that your newly re-filed application will be examined in the order received, meaning that earlier-filed applications will be examined before yours.

The risk of reapplying for the same mark is that your later trademark application may be rejected due to earlier-filed applications or registrations. The USPTO trademark examining attorney will not consider your date of first use which may precede theirs. The burden will rest on you to either argue that your mark is different, or reach some type of resolution with the earlier trademark filers. In certain cases, you may need to file a cancellation against blocking registrations. The path to a re-registration may be difficult, time-consuming and expensive. You basically have to deal with new hurdles due to the loss of your previous registration.

Can others apply for a mark similar to your dead trademark?

It is possible. If you have continued to use your mark despite the fact that the registration lapsed, then you may have grounds for opposing or canceling a third party’s trademark filing due to your earlier use. If your registration has been canceled, you can no longer depend on the USPTO to reject subsequent applications for similar marks. The burden will rest on you to challenge filings by others.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com