Trademarks are the longest-lasting intellectual property. Coca-Cola feels like has been here forever. Actually, on January 31, 1893, the logo was trademarked with the U.S. Patent Office. Trademarks help consumers easily recognize, which company is the manufacturer or source of a product or particular service. Trademark registration is the best way to protect important brand elements from misuse by others. Owning a trademark is owning a property which you can sell, license, inherit, invest etc.

But, how long does a trademark registration last?

The duration of a trademark registration varies depending on the country’s laws where it was registered, but it’s typically ten years (exceptions are rare).

What does trademark renewal mean?

In the United States, the EU, China, Canada and most other countries, trademarks have to be renewed every ten years. This means that when the trademark expiry term approaches, you have to file a trademark renewal request and pay the fees.

In the US, if the mark is still being used between the 5th and the 6th year after it was registered, then approaching the deadline the registration can be renewed. To prove the use, owner must file the maintenance documents required by the United States Patent Trademark Office (USPTO) within the adequate time frames. The owner must also meet the legal requirements for the trademark to be renewed. (You will find more details below.)

To renew the trademark in the European Union, the owner must pay the renewal fee before the renewal deadline.

What happens when renewal documents are not filed of fees not paid?

If trademarks are not maintained or renewal fees are not paid, trademarks can be cancelled by the relevant Trademark registry institution. If the registration is cancelled, it cannot be reinstated, and you need to apply for registration again.

Most of the countries (including the US and the EU) offer a 6-month grace period to renew the registration, but petitioners need to pay an additional fee.

If your trademarks are cancelled or expire, they can still be protected under common law, in case you have continued and continue using them for the specified goods or services. Still, it is costly and bears risk to protect unregistered trademarks. Therefore you should follow your trademark maintenance requirements or hire an attorney to do this.

Registration and renewal of trademarks in the US

1. Trademark registration

If you are a resident of the US, you can file the trademark application by using the Trademark Electronic Application System (TEAS). If you are a foreigner (individual or business) you will need to hire a US trademark attorney (Persons Authorized to Practice Before USPTO in Trademark Matters) to represent you before the USPTO.

The following documents must be prepared with the application:

• A Statement of use and a list of previous examples of use
• A trademark image (graphical representation)
• A trademark specimen (a sample of your trademark as used in commerce)

2. Declaration of Use

This needs to be done between the 5th and 6th anniversary of the date of your initial trademark registration. Here you can find specific maintenance forms.

USPTO is not sending reminders when you need to file maintenance documents.
It is your responsibility to request your trademark renewal on time.

3. Application for Renewal

This needs to be done between the 9th and 10th anniversary of the date of your initial trademark registration, and every ten years for as long as you want the exact trademark to be in force.

Renewal forms can be located on the USPTO website, following this link.

The USPTO will not send you any reminders, and it is your responsibility to file the renewal and pay the fees before the deadline.

Registration and renewal of trademarks in the EU

1. Trademark registration

If you are a resident of the European Union, you can file the trademark application by using the EUIPO trademark registration online forms. If you are a foreigner (individual or business) you will need to hire an official representative, who has a right to represent foreigners before the EUIPO.

You can contact me, and I will help you with everything regarding the EU trademark matters. Here is my EUTM portfolio.

The following documents must be prepared with the application:

• A trademark image (graphical representation)
• A list of goods and services

2. Application for Renewal 

This needs to be done between the 9th and 10th anniversary of the date of your initial trademark registration, and every ten years for as long as you want the exact trademark to be in force.

If you have filed your trademark application, you will receive the renewal reminder from the EUIPO. And if you have a representative, she shall remind you of renewal when the time comes.

Renewal of international registrations

Once your mark has been recorded in the International Register, the international registration is valid for ten years and can be renewed every ten years directly with WIPO (upon payment of the required renewal fees).

You may renew your international registration either before the 10-year term of protection expires or within the six-month grace period following its expiry. Note that you must pay a surcharge if you renew during the grace period.

You can request renewal by filing and submitting the form, but the easiest way is to do it online.

If you need any help to proceed with your trademark registration or renewal – contact a trademark attorney to advise you through the whole process or do it for you.