Thursday, August 11, 2011

IP, Business and Franchising Law | Fabian, LLC

Once the trademark registration certificate comes in the mail, many people do not realize that this is not the end of the process with the United States Patent and Trademark Office. Trademark registrations expire if not timely renewed, and allowing a registration for a trademark still in use to expire can have significant consequences for the value and longevity of the brand.

Trademark registration renewals?called ?Declarations of Use? (or ?Declarations of Excusable Nonuse? under certain circumstances)?must be filed:

  • During the fifth year after the registration is issued;
  • During the ninth year after the registration is issued; and,
  • Before each 10-year anniversary thereafter.

While it is nice that the renewals are so infrequent (especially since each renewal entails a filing fee), trademark owners need to be sure to record the renewal deadlines in an automated system to make sure they are not accidentally overlooked. I personally docket and maintain records of the renewal deadlines for all of my clients to help make sure the filing deadlines are not missed.

Missing a renewal deadline can have significant effects for an enduring brand. Many interested business owners (or their attorneys) monitor the registrations for trademarks they would like to own, and if a registration lapses, they have the opportunity to swoop in and file an application to obtain a new registration for the trademark. While the owner who let their registration expire will still have ?prior? rights in the geographic area(s) where they sold their goods or services, the new applicant will be able to expand with the mark in other areas?thereby preventing the original owner from doing so. This is a legitimate practice so long as the new applicant has a ?bona fide? intent to use the trademark in commerce (as opposed to merely preventing the original owner from doing so).

When a trademark is no longer in use at the time a renewal deadline arises, the owner must decide whether to abandon the mark or try to retain exclusive rights in order to preserve the possibility of reviving the mark in the future. Since the filing and legal fees for maintaining registrations are fairly modest, preserving this possibility is usually a good idea?unless the owner has no intention whatsoever to revive the mark at a later date (for example, if a graphic design has become outdated or if the mark has acquired a negative image or connotation). These are all considerations that go into developing and maintaining a valuable intellectual property portfolio.

Fabian, LLC is a boutique intellectual property law firm that assists business owners and entrepreneurs in developing, monitoring and protecting trademark portfolios. We provide trademark clearance, trademark registration and trademark monitoring services. Visit www.fabianlegal.com for more information, or contact the firm directly at 410.908.0883 or jeff@fabianlegal.com. You can also follow Jeff on Twitter @jsfabian.

Source: http://fabianlegal.info/ipandbusinessblog/?p=252

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