Table of Contents
Written by : Kirby Flournay
Current : 5857
Write a comment
Write a comment
you can now file trademark assignments renewals and registered owner name changes online through our biz file California portal now just like with trademark registrations you can file and pay online using your device of choice it's as easy as one two three one enter filing information and upload the supporting document 3 receive a copy of filing certificate and file document by email once approved if you need to renew your trademark for another 5 year term a sign ownership of your trademark to another entity or update the name of the registered owner of your trademark you can now do so simply and easily online through biz file
Thanks for your comment Hulda Sivak, have a nice day.
- Kirby Flournay, Staff Member
hey this is elizabeth potts weinstein and today we're going to talk about how to maintain your trademark including the trademark renewal process timeline so in the united states if you apply for a trademark with the united states patent and trademark office it doesn't mean that you have that trademark forever if it's granted in the uspto you have to renew or maintain your trademark on a schedule and that schedule could go on forever in theory you have to keep maintaining it or the trademark disappears so in this video we're going to talk about what you need to do to maintain your trademark the stuff that you need to file and the timeline schedule so why do you need to maintain your trademark well as i said the obvious thing is that it will expire it will be deemed abandoned if you don't maintain it on a regular basis also there are certain things you can file specifically the section 15 declaration of incontestability that will help you if your trademark ever gets challenged if you already have your trademark and you want to know what's going on with your trademark has it already been deemed abandoned when your renewal stuff is all due then click on this link to watch a video where i talk about how to check your trademark status so what do you need to make these filings to renew your trademark well first you're going to need to prove up that you still use your trademark and that's going to be your specimen of use now if you aren't using your trademark right now but you're going to use it again later perhaps you stopped using your trademark because of a seasonal issue or because of the pandemic but you have every intention to get back to using it you can file you can file under excusable non-use but this is something that you're filing under penalty of perjury so you really do need to intend to use it again along with this specimen of your use you're also going to file a declaration that will just be part of the filing where you declare that you're still using it you've been continuing to use this this entire time and you're using in all the categories in which you filed of course there's going to be fees along with this filing like there are with most fees before the uspto what the fees are something you'll need to check when you're watching this video because those fees do change sometimes it will be something like 125 or 150 or 200 per class so if you filed for your trademark in multiple categories it's almost like those are different trademarks so you're going to have to pay those fees for every single category just like you did at the beginning this filing can be done online and some people will be able to do it themselves but for some of you you may want to go back to the attorney who helped you originally to get their assistance in doing the filing to make sure you got everything done right one thing to remember is the attorney or the service you use to help you do your original filing may not be the one to remind you that you need to do this you need to take that responsibility yourself because it's your trademark so make sure that you put these filing dates on your calendar and don't depend upon some service or some some lawyer to track that what's the timeline for renewing your trademark for all of the dates there's going to be multiple dates the first date will be the date that you can do this filing then there'll be a date it's the kind of actual deadline and then there'll be a late filing date so if you miss all the deadlines there's still a late filing date there'll be a lot of extra late fees for every single class in which you're renewing but it's still possible to do that renewal at that time the first time you need to maintain your trademark is between five and six years after the trademark issued and there you'll be filing a section eight declaration of your use the second time is at ten years so just five years later technically between nine and ten years and there you'll be filing the section eight again and then you'll also be filing the section nine application for renewal and then every nine to ten years after that you're gonna have that same section eight section nine over and over and over again theoretically forever at that five to six year mark you are also then eligible and you're continuing to be eligible in the future after that to file a section 15 declaration of incontestability what this means is that there's no adverse or pending legal litigation involving your trademark and that you're declaring that you're the only person who's using this in commerce if you can do that and you file that section 15 it's very helpful in the future if you ever have to go up in litigation against anyone to enforce your trademark because it takes away a lot of their legal arguments important aspect to remember is that you need to keep your contact information up to date with the united states patent and trademark office they do send reminders i wouldn't depend on it but they do send reminders but they're going to send it to the address and or email address that you have on file if you've changed your address if you change your phone number if you have a different mailing address you're not going to get any of those notifications and your trademark may be expired abandoned another aspect to remember is you need to have the correct ownership information on file before you can file any of this stuff so this tends to come up for businesses where they started out as a sole proprietorship or partnership and then they converted into an llc or corporation when you do that you need to transfer all of the assets including your trademarks into the new llc or corporation and you need to take that transfer document in this case for trademark as an assignment and file that with the uspto again this is attorney elizabeth potts weinstein if you have any questions or comments about this video about maintaining your trademark go ahead and ask them below and i'll try to point you in the right direction if you found this video helpful hit the thumbs up button and subscribe for more information about trademarks and other legal aspects for small business owners thanks a lot goodbye you
Thanks Naulay your participation is very much appreciated
- Kirby Flournay
About the author
I've studied paleoradiology at University of Illinois at Urbana-Champaign in Champaign and I am an expert in climatology. I usually feel satisfied. My previous job was credit analyst I held this position for 8 years, I love talking about camping and comic books. Huge fan of Emma Thompson I practice bocce ball and collect military items.
Try Not to laugh !
Joke resides here...