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What happens to the underlying trademark when a trademark is not renewed according to section 8?
- 01 August, 2024
- Nyall Engfield
What happens to the underlying trademark when a trademark is not renewed according to section 8?
When a trademark is not renewed according to Section 8 of the Lanham Act (U.S. Trademark Law), the following happens to the underlying trademark:
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Cancellation of registration:
- If the trademark owner fails to file the required Section 8 declaration of use or excusable nonuse between the 5th and 6th years after registration, and again between the 9th and 10th years, the trademark registration will be canceled by the United States Patent and Trademark Office (USPTO).
- The cancellation of the registration means that the trademark is no longer listed on the federal trademark register.
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Loss of legal presumptions:
- Once the trademark registration is canceled, the owner loses the legal presumptions that come with a valid federal trademark registration.
- These presumptions include the exclusive right to use the mark nationwide, the validity of the mark, and the owner's ownership of the mark.
- Without these presumptions, it becomes more challenging for the owner to enforce their trademark rights against others.
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Weakened trademark protection:
- Although the underlying trademark rights may still exist based on common law usage, the protection is significantly weakened without a valid federal registration.
- The owner may still have common law rights in the geographic areas where the mark has been used, but enforcing those rights can be more difficult and costly.
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Vulnerability to challenges:
- Without a valid federal registration, the trademark becomes more vulnerable to challenges by others who may want to use similar marks.
- Competitors or other parties may be more likely to adopt similar marks, arguing that the owner has abandoned their rights by failing to maintain the registration.
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Difficulty in licensing and selling:
- A canceled trademark registration can make it more challenging to license or sell the trademark.
- Potential licensees or buyers may be hesitant to invest in a mark that lacks the strong legal protections and presumptions associated with a valid federal registration.
It's important to note that while failing to renew a trademark registration can have significant consequences, it does not necessarily mean the owner loses all rights to the mark. The owner may still have common law rights based on their use of the mark in commerce, but those rights are generally more limited and harder to enforce compared to the rights associated with a valid federal registration.
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