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Protecting a Precious Asset - Your Trademarks (or Your Brands): Part Three in Our Series
September 20, 2016
In our last article, we explained trademark filings for showing continuous use of a mark. This third article in our trademark series explains renewal applications and practical suggestions for the trademark owner to avoid losing trademark protection for its marks. 
Most trademark registrations must be renewed every ten years. A written renewal application must be filed during the last year of each successive ten-year period for which the registration is issued or renewed and include payment of the required trademark renewal fee. The registration expires if a timely renewal application is not filed (TMEP § 1606.13(c)). However, international registration holders can only renew their registrations through the International Bureau.
The trademark renewal (Section 9) application includes a request for renewal signed by the registrant or its representative, and a list of the particular goods or services covered by the renewal (if the renewal application does not cover all goods and services listed in the original registration). The renewal application may be combined with an Affidavit of Use under Section 8, which is due at the same time. Because the company’s brand may be at stake, trademark owners should retain information related to trademark registrations and keep it organized.
If the trademark holder maintains a current email address and authorizes email communication from the United States Patent and Trademark Office (“USPTO”), courtesy email reminders of maintenance filing deadlines are sent automatically. It is also advisable for trademark owners to maintain a docket or calendar system and not depend on reminders from the USPTO. An owner of even a modest trademark portfolio or its counsel should maintain a docket that tracks applicable maintenance and renewal requirements and associated deadlines based on the registration date of each registration, and provide electronic notifications to the appropriate persons for approaching maintenance and renewal deadlines.  Most intellectual property law firms and some companies establish deposit accounts with the USPTO for convenience of paying USPTO fees for registration maintenance.
Since evidence of use is essential to the maintenance of a trademark registration, trademark owners are advised to collect and preserve relevant materials.  Relevant materials include:
  • samples of product packaging displaying the trademark;
  • samples of advertising and promotional materials showing the trademark;
  • invoices, purchase orders, and sales records documenting the first use date for a trademark;
  • documents demonstrating sales of trademarked products or services;
  • and market research showing consumer recognition of the products or services associated with the marks.
Trademark owners should also maintain organized records so that counsel can obtain relevant use evidence for each class of goods or services for each mark. Trademark records also aid in enforcement efforts to establish a mark's duration and geographic scope of use, priority, strength and intended markets. 
If you have any questions about the trademark process or intellectual property issues, please contact us.

Intellectual Property William P. Smith