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What happens to the trademark rights if the renewal is missed
- 01 August, 2024
- Nyall Engfield
What happens to the trademark rights if the renewal is missed
If the renewal of a trademark registration is missed, the trademark rights are affected in the following ways:
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Loss of federal registration:
- When the trademark owner fails to file the required Section 8 declaration of use or excusable nonuse within the specified time periods (between the 5th and 6th years after registration, and again between the 9th and 10th years), the federal trademark registration will be canceled by the USPTO.
- Once the registration is canceled, the trademark is removed from the federal trademark register.
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Weakened legal protection:
- Without a valid federal registration, the trademark owner loses the legal presumptions and benefits associated with registration.
- The owner no longer has the presumption of exclusive nationwide rights to use the mark, the presumption of the mark's validity, and the presumption of ownership.
- This makes it more difficult for the owner to enforce their trademark rights against others who may use similar marks.
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Reliance on common law rights:
- After the cancellation of the federal registration, the trademark owner must rely on common law rights derived from the actual use of the mark in commerce.
- Common law rights are generally limited to the geographic areas where the mark has been used and can be harder to establish and enforce compared to the rights provided by a federal registration.
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Potential loss of trademark rights:
- In some cases, failing to renew the trademark registration and the subsequent cancellation may be seen as evidence of abandonment of the trademark.
- If the owner stops using the mark in commerce and does not take steps to maintain the registration, it can be argued that they have abandoned their rights to the mark.
- Abandonment can lead to the complete loss of trademark rights, allowing others to adopt and use the mark freely.
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Difficulty in enforcement and protection:
- Without a valid federal registration, it becomes more challenging for the trademark owner to enforce their rights against infringers.
- The owner may need to rely on state trademark laws or common law principles, which can be more complex and costly to pursue compared to enforcing a federal registration.
- The lack of a federal registration may also make it harder to protect the trademark internationally, as many countries give priority to marks that are registered in their jurisdiction.
If a trademark owner misses the renewal deadline and the registration is canceled, they may have the option to file a new trademark application to regain the benefits of federal registration. However, this process can be costly and time-consuming, and there is no guarantee that the trademark will be approved for registration again.
In summary, missing the renewal of a trademark registration can lead to the loss of federal registration, weakened legal protection, reliance on common law rights, potential loss of trademark rights, and difficulties in enforcement and protection. Trademark owners should be vigilant in maintaining their registrations to ensure the continued strength and enforceability of their trademark rights.
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