Done correctly, trademarks are like diamonds – they last forever. But, this is only true if you register the mark at the federal level, and keep up with all of the necessary maintenance requirements.
Now, if you want to continue to have federal protection, you must use and renew the mark. The United States Patent and Trademark Office (USPTO) will send you renewal email reminders, so it’s important not to ignore these.
When Does My Trademark Expire?
Note that trademark registration lasts 10 years. However, between year 5 and year 6, you must file what is known as a Declaration of Use and/or Excusable Nonuse of a Mark form. You must also submit this document between year 9 and year 10.
The good news is that if there are no issues at the 10-year mark, you can renew the trademark for another decade. The main issue that we see come up involves cases where a business is not currently using its mark.
Excusable Nonuse
Keep in mind that if you are not actively using your trademark, you typically cannot hold on to it. However, there are some instances where you are allowed, which is referred to as “excusable nonuse”.
For example, you are excused from using your mark if you have orders on hand for a product that cannot be produced quickly (such as an airplane), and you are actively working towards filling those orders.
Another example would be if you suffered an illness, fire, or another catastrophe that temporarily makes you unable to use the mark. However, for this exception to apply, you must intend to return to business as soon as you can.
The sale of a company is also an acceptable reason for nonuse, so long as you are in the process of selling the business, and the new owners will pick up the trademark as soon as they can. If you are unsure whether or not you meet one of the exceptions to trademark use, it can be helpful to speak to an attorney.
What Happens if My Trademark Expires?
It’s important to note that a registered trademark can expire after year 5 and year 10. This would occur if you fail to file the appropriate renewal documents. But, keep in mind that USPTO offers a 6-month grace period. This means that you would still have trademark protection, but may have to pay a larger fee.
However, after the grace period has expired, your mark is considered abandoned. This is important because someone else may register the mark and you would not be able to renew it once this occurs. Further, if another business infringes on your trademark and it has expired, you have no remedies at the federal level.
That said, you may still have some state law protection. But, you would be precluded from suing under the federal trademark law. These cases can be complicated, so it can be helpful to speak with an attorney if you have questions about enforcing an expired trademark.
Can I Use an Expired Trademark?
As part of trademark research for your business, you may have come across marks that are listed as “dead” in the USTPO database. Now, there may be a number of reasons that a trademark is classified this way, including expiration.
However, just because a trademark is considered dead does not mean that you are free to use it. Remember, a trademark does not need federal registration in order for an owner to have legal protection. This is important because the owner may still have rights under state or common law.
That said, there may be limits to the protection of a dead trademark. For example, the owner may only be able to enforce ownership at the local level (where they conduct business).
Now, in cases where a trademark is not being used anywhere, this can be a sign that it would be acceptable for you to start using it. For this reason, it’s important to do a thorough investigation of all marks. Having a qualified attorney handle these matters will help ensure that you avoid any trademark issues with your business.