+ DO I NEED TO RENEW MY US TRADEMARK REGISTRATION?

A registered trademark owner must file a Section 8 Declaration of Continued Use between the fifth and sixth year of registration, and must also provide a specimen showing the trademark in use.

(See: WHAT IS A PROPER SPECIMEN?, located under Trademark Application Process.)

If a registered trademark owner fails to file the Section 8 Declaration of Continued Use prior to the end of the sixth year of registration, the trademark will be cancelled.

There is a grace period of sixth months in which to file your Section 8 Declaration of Continued Use.

Between the ninth and tenth year of registration, the trademark owner must file both a Section 8 Declaration of Continued Use and a Section 9 Application for Renewal. In addition, a specimen showing the trademark in use must be provided.

There is again a six month grace period to file your renewal documents.

If the trademark owner fails to file the Section 8 Declaration of Continued Use and Section 9 Application for Renewal prior to the end of the grace period after the sixth year of registration, the trademark will be cancelled.

The renewal process continues like this every tens years.

+ CAN MY TRADEMARK EVER BE CANCELLED BY SOMEONE ELSE?

A petition to cancel the registration of a trademark can be filed by any person who believes that he is, or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of the trademark act.

A petition to cancel registration of a trademark may also be filed in cases of abandonment of the mark by its owner.

(See: WHAT IS TRADEMARK ABANDONMENT?)

This petition must typically be filed within five years of the date that the mark at issue was registered.

The U.S. Trademark Trial and Appeal Board, hears all petitions for cancellation of a US Trademark Registration.

A trademark may also be cancelled at any time if it becomes the generic name for goods and services. (See: WHAT IS A GENERIC MARK?)

+ WHAT IS TRADEMARK ABANDONMENT?

A trademark is considered abandoned by its owner if either of the following happens:

(1) Its use is discontinued with intent not to resume the use.

Note, there are some technical requirements here. Stated simply,

(a) Nonuse of the trademark for three consecutive years is considered "prima facie" (on its face) evidence of abandonment.

(b) There must be a "bona fide" (genuine) use of the trademark "made in the ordinary course of trade, and not made merely to reserve a right in a mark."

(2) When the owner of a trademark "causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark."

(See: WHAT IS A GENERIC MARK?)

-15 U.S. Code § 1127 - Construction and definitions; intent of chapter

+ WHAT IS A GENERIC MARK?

A mark can become generic and as a result lose protections previously offered by its trademark status.

This occurs when a trademark becomes associated by a majority of the public with a type of good or service rather than the source of a good or service.

Famous examples include Thermos, Flip Phone, and Laundromat.