When do I need to file a trademark renewal?
The first renewal must be filed between the 5th and 6th year anniversaries of your trademark registration. After your first renewal, you will need to file before every 10th anniversary of your trademark registration. Thus, you will need file a renewal before the end of year 6, year 10, year 20, year 30, and so on until your business no longer uses the trademark.
What do I need to provide to file the renewal?
We need proof that your business is continuing to use the trademark in the same manner that you originally applied for. If the mix of goods or services have changed, it may be time to file another trademark application, or delete unused goods and services from your application.
What does "use in commerce" mean for trademark renewal?
To meet the USPTO’s criteria for "use in commerce," the following conditions must be satisfied:
Active sales in the U.S.: The goods or services associated with the trademark must be sold to U.S. consumers before the renewal deadline, demonstrating that the trademark continues to identify the source of the goods.
Proper trademark display: The trademark must appear visibly on the goods themselves, the tags, packaging, or any medium through which the goods/services are sold. For example, a clothing brand might display its trademark on t-shirts, hats, or product labels.
These rules apply equally across all industries and types of goods.
Is it possible to make changes to a Trademark when it is renewed?
Can selling on-hand inventory count as "use in commerce?"
Yes, selling existing on-hand inventory qualifies as "use in commerce," provided the following conditions are met:
The goods sold bear the trademark as outlined above (e.g., displayed on the product or packaging).
These sales are conducted within the U.S. prior to the renewal deadline.
This is a practical option if you are no longer actively producing new items but still have older stock that is legally branded and available for sale. However, only goods actively sold in the U.S. at the time of filing can be included in the renewal application. Goods that are no longer being sold must be excluded from the registration.
It is not possible to change the words or design of a trademark when renewing. It is required that we remove unused goods and services during a renewal. Further, if the trademark has been sold to a new owner, the ownership must be updated prior to renewing (through a separate filing).
If the trademark is no longer being used for any of the listed goods or services, you cannot legally file for renewal. In this case:
The registration will lapse: An unused trademark that no longer meets the "use in commerce" requirement will not qualify for renewal, and the USPTO will cancel the registration.
Future applications: If you wish to resume use at a later time, you will need to reapply for registration under USPTO guidelines once the trademark is again in active use.
If the trademark is being used to promote new goods and services not on the renewed registration, a new application should be filed for those goods and services. It is not possible to add them to the renewed registration.
How many times can I renew my trademark?
As long as you keep your renewals up to date, your trademark will remain registered. There are currently trademarks in the U.S. that have been continuously registered since the 1800’s, like the Quaker Oats logo, for example.
What happens if a trademark renewal is not filed?
If you do not file by the final deadline, your trademark registration will be abandoned. You will need to file a new trademark application to secure your trademark rights.
How much does it cost to file a trademark renewal?
Markavo charges a $299 service fee to perform the work for you. For the 6th year renewal, the government charges $325 per class in government fees. For any 10th year renewal, the government fees are $650 per class.
Can you file the section 15 Declaration of Incontestability when you file the renewal?
Yes. Markavo charges an additional $99 and there are $250 in government fees. You will have the option of adding this service to your order when we collect your intake information. The Declaration may be filed during either the 6th year or 10th year renewal.
How long does it take to file a trademark renewal?
Most renewals are filed within 3-4 business days after receiving payment and all required information and government fees from the client.
How Do I Pay Markavo for a Trademark Renewal?
Like all of our services, the first step is to pay the attorney fee by going to the Trademark Renewal Service page here: https://www.markavo.com/trademark-renewal-service
Several moments after payment clears, you will be emailed an intake form where you will give us additional information about your trademark to be renewed.
Right before your attorney files the trademark renewal, you will be charged the government filing fees to the payment method we have on file.