Registering a trademark is a significant achievement that provides essential protection for your brand. However, the trademark journey doesn't end with its registration. Proper maintenance and ongoing renewals are essential in keeping hold of a brand’s IP in the long run.
In this guide, we'll explore the crucial steps to maintain and renew your trademark to ensure unchallenged ownership and ongoing protection against infringements.
Properly Maintaining a Trademark
The most important factor that determines whether a business keeps its registered trademark is its use in commerce.
If a business continues to use a trademark, be it on its website, on products and packaging, in advertising, or elsewhere in the public domain, then it is almost guaranteed to retain the rights to that trademark.
Documentation is also an essential part of maintaining a trademark. Trademark owners need to keep careful records of their marks, including:
- The original certification.
- Ongoing renewal certificates.
- Records of the trademark being used in the public domain.
- Records detailing any changes in ownership of the mark.
- Proof of payments relating to the trademark.
Ensuring all this documentation is up-to-date, properly maintained, and easy to find at a moment’s notice is crucial.
These documents play a pivotal role in many important situations, such as filing for trademark renewals, enforcing IP rights in online spaces, handling other legal IP disputes, planning and signing licensing agreements and business transactions, and more.
Whether substantiating your claims in online infringements or instilling trust in potential partners during negotiations, careful record-keeping reinforces your brand's protection, value, and success across various scenarios.
Enforcing Your Trademark Rights
Properly maintaining a trademark extends beyond documentation and renewal. It also involves vigilance in enforcing your trademark rights against infringements and challenges. Defending your intellectual property is vital in preserving its value and integrity and ensuring your ownership in the long run.
Vigilant trademark monitoring helps you identify potential infringements promptly. When someone uses your mark without permission or a similar mark causes confusion, you are put at risk of trademark dilution, trademark genericide, and other threats to your ownership.
These risks are especially common in online spaces, where unauthorized use on websites, social media, or e-commerce platforms can harm your brand's reputation. Online threats to trademarks come in many different forms, so it’s essential to be protective of your IP.
Enforcing your trademark rights demonstrates your commitment to safeguarding your brand's integrity and market position. By proactively addressing infringements, you not only protect your trademark but also maintain its strength and value in the marketplace.
With these principles in mind, let's explore the critical steps for trademark renewal to ensure unchallenged ownership and enduring protection.
How to Renew Your Trademark
When you register a trademark, it has the potential to last forever. However, achieving this requires you to renew it periodically. The majority of national IP offices will have mark owners file a trademark renewal every 10 years to prove the mark is still active in commerce.
Note: Some jurisdictions, like the US, require trademarks to be renewed just five years after the initial registration. This is the Section 8 Declaration, which functions as a statement that you're still using your trademark. You may have to complete this step first before your full renewal, which comes 10 years after the initial registration.
About one year before your renewal deadline, you should begin preparing for the renewal process. This includes gathering all necessary documentation and information for the renewal application.
File your renewal application with the trademark office relevant to your desired protection jurisdiction. This may be the European Union Intellectual Property Office, United States Patent and Trademark Office, China National Intellectual Property Administration, or the relevant trademark office elsewhere in the world.
Take a look at WIPO’s Directory of Intellectual Property Offices to find the one you need.
The application to renew your trademark typically requires the following information:
- Your registration number and current trademark details.
- A specimen of your current use of the mark.
- A statement confirming that you are still using the mark in commerce.
The upside of the trademark renewal process is that it’s always much simpler than the original registration. As the IP office already has all your details and has already approved the initial validity of your IP, renewal tends to be a much smoother operation.
How Much Do Trademark Renewals Cost?
Renewing your trademark registration involves a fee. The cost will vary depending on the number of classes your trademark covers, the filing method, and the IP office through which you’re applying.
Here is a quick cost breakdown for the US, EU, China, and UK:
- In the US, a trademark renewal costs USD $525 per class
- In the EU, renewing a trademark costs EUR €850, with an additional €50 for the second class and €150 for each additional class beyond those.
- In China, a trademark renewal costs CNY ¥450
- In the UK, renewing a trademark costs GBP £200, and then £50 for each additional class.
Please also note that submitting a renewal request after the deadline increases the cost in nearly every IP office worldwide.
How Often Do You Have to Renew a Trademark?
The United States, the European Union, and most other countries follow a ten-year renewal cycle for trademark registrations. Once a trademark has been registered and approved, the owner enjoys ten years of trademark protection.
To maintain these exclusive rights, trademark owners must renew their registration every ten years. As long as the business continues to use the trademark in commerce, this renewal can be repeated every ten years with no upper limit of renewals.
Renewing for the Right Classes
A common mistake made during the renewal process is to apply for a trademark renewal for certain goods and services that were active during the original registration or previous renewal but are no longer in use.
During a registration, you can apply to have the trademark cover a number of classes of goods or services. But, if any of those classes aren’t actually used in commerce any longer, you are not allowed to request a renewal for them.
Example: Imagine a business that applied for a trademark to cover multiple products. These products include a series of coffee drinks (class 30), as well as a number of soft drinks (class 32). After three years in commerce, the business decided to stop producing and selling the line of soft drinks and focus solely on their coffee. Six years later, as the business prepares for their upcoming trademark renewal date, they would have to change the application to only cover the class of products in use, which would be class 30.
Multinational Trademark Renewals
Renewing your trademark in one country or region does not automatically renew it everywhere. Trademark rights are territorial, which means that they are specific to the country or region in which you have registered your trademark. Renewing your trademark in one jurisdiction generally extends its protection only within that jurisdiction.
For example, if you previously registered a trademark in the US and then registered it elsewhere through other IP offices, renewing it after 10 years through the USPTO won’t renew your trademark ownership in other countries.
If you have registered your trademark in multiple countries or regions, you will likely need to manage the renewal process for each registration separately, which could involve distinct renewal requirements, fees, and deadlines for each country.
Using the Madrid System streamlines things significantly for many trademark holders who have expanded their trademark protection to additional countries. This centralized system massively lowers the cost and time investment required for multinational trademark registrations and renewals.
Summary
Maintaining and renewing your trademark is an ongoing commitment crucial to safeguarding your brand's integrity and value. Ensuring meticulous documentation, active enforcement of trademark rights, and timely renewals are fundamental steps in this journey.
Key Takeaways:
- Careful Documentation: Keeping well-organized records is essential for scenarios like renewals, IP rights protection, and business transactions.
- Vigilant Enforcement: Actively defending your trademark rights is crucial to maintaining brand integrity, reputation, and market position.
- Renewal Variations: The trademark renewal process varies by region, with differing costs, renewal frequencies, and specific requirements.
- Class-Specific Renewal: Renew only the classes still in use, ensuring efficient and cost-effective trademark protection.
- Territorial Rights: Trademark protection is territorial, requiring you to navigate unique renewal criteria for each jurisdiction in which you've registered.
Whether defending against infringements, updating your records, or managing renewals, a proactive approach bolsters your brand's protection and ensures unchallenged ownership in a dynamic marketplace.
For expert guidance in trademark maintenance, renewal, and enforcement, MarqVision is here to back you up. Our team of expert professionals is here to support you every step of the way, ensuring the safeguarding of your brand's intellectual property rights.
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