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Trademark Cancellation

Trademark owners can enjoy the benefits that the law provides the moment trademarks are registered. However, trademark renewal is also necessary to keep your trademarks alive over time. As the law only protects trademarks that are being used, a trademark is cancelled if it is not utilized within three consecutive years with no further intention by the owner to use it again. While there are exceptions to this in the form of an “Excusable Nonuse” file, you can prevent the extra work by simply making sure that your trademark is regularly used in the market. You must also file renewal documents after your registration to verify your intent to use to the USPTO. These documents also help the USPTO keep your information up to date to continue granting you the legal protections and rights you are entitled to as the owner.

If the trademark owner fails to file renewal documents, the trademark will be cancelled. The first round of renewal documents must be filed between the fifth and sixth years after the registration date, with a 6 month grace period after the sixth year. Once this is completed, the second round of documents must be filed between the ninth and tenth years after the registration date, with a six month grace period after the tenth year. After this point, the owner must only refile these documents after every ninth and tenth year interval, with a 6 month grace period that follows each tenth year. Failure to refile after each 6 month grace period will lead to cancellation.

Once your trademark is cancelled, the same name can be registered and used by another party. If you want to avoid this, you must re register to become the owner again before another party does so first. You must begin the registration process from the beginning and pay the original filing fees again. Do your best to avoid this situation from happening if you desire to continue using your trademark. It is much more favorable from a financial and business perspective to keep your trademark alive through the regular filing of renewal documents, rather than resorting to reregistration.

As time is of the essence when dealing with trademark renewal, it is important to begin working on post-registration documents as soon as the interval period begins. Submitting these early is preferable, as the USPTO will charge an additional fee if your renewal documents are filed during the 6 month grace period. Hiring a trademark attorney to renew your trademark is recommended to help you through this process, as well as to ensure that your ownership information is up to date and accurate each time. By remaining on schedule of your renewal documents, you can successfully avoid cancellation and thus continue reaping all the legal protections that your trademark provides.

Written by: David Sacasa Ⓒ 2021 Alcoba Law Group P.A.
Picture Credits: Miri Paez Bolet.
Reviewed by: Ruben Alcoba

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