What Is A Registered Mark, Mark Renewal, and Abandonment?
If your trademark or service mark qualifies under federal law, you can apply to register it with the U.S. Patent & Trademark Office (USPTO) for extra legal protection under U.S. law. For a registered mark, you add a superscripted “R” inside of a circle.
A registered mark receives special protections under U.S. federal law that are unavailable to unregistered marks. For example, a registered mark creates a legal presumption nationwide that you own the mark with exclusive right to use it for the goods and/or services for which you registered it with the USPTO.
If you are building a brand for products and/or services, this is why it typically makes sense to take advantage of USPTO registration for your mark if it is eligible.
Most mark owners retain an experienced trademark lawyer to handle the application process.
This typically includes preliminary work to determine whether you should apply for registration, such as a comprehensive search of federal, state and common law marks that may conflict with the mark you want to register. This search is important because the federal database of registered marks, the USPTO Trademark Electronic Search System (TESS), does not include state and common law unregistered marks that may conflict with the mark you want to register.
In addition, your trademark attorney will use the USPTO Acceptable Identification of Goods and Services Manual to properly classify and describe the goods and/or services for which you’re seeking registration. This is very important because you want the registration to protect your brand but not be overbroad so that it inaccurately covers goods or services unrelated to what your brand. For example, if your mark is the unique name of your restaurant chain, the description shouldn’t be so broad that it covers children’s swimwear you don’t sell in your restaurants.
The application itself will be reviewed by an attorney who works as a trademark examiner for the USPTO. Although this attorney may answer some procedural questions if you file the application yourself, as a USPTO employee the examiner will not give you legal advice.
Trademark Registration Renewal and Abandonment
How do you maintain the federal registration for your mark?
Generally, after between 5 and 6 years after your registration date, you’ll need to file a maintenance document with the USPTO (Declaration of Continued Use or Excusable Nonuse).
In addition, every 10 years after your registration date, you’ll want to renew your registration by filing a maintenance document with the USPTO (Combined Declaration of Continued Use and Application for Renewal).
An experienced trademark lawyer can handle these maintenance documents for you.
What happens if you fail to file to timely file these documents?
The USPTO will deem the mark to have been abandoned (cancelled or expired) and you will lose all of the advantages of having a registered mark. However, you may still have lesser legal rights for it as an unregistered mark.