Trademark is more than just symbols or words; they’re the identity of businesses and creators in the marketplace. They help consumers distinguish between products and services, ensuring that quality and reputation are maintained.
For creators and businesses, understanding the duration is crucial. It’s not just about owning a trademark; it’s about maintaining its validity and ensuring it continues to protect your brand.
Duration of Trademarks at a Different Levels
In the U.S., once you own a trademark registration, there are certain steps you must take to keep it alive.
Firstly, it’s essential to use the trademark in commerce. But using it once isn’t enough. To maintain the registration and its benefits, you need to demonstrate its use regularly.
Typically, you’ll need to submit a signed declaration stating you’re still using it with the associated goods and services. This is usually accompanied by a specimen for each class of goods or services.
Now, let’s talk numbers. To keep your U.S. trademark registration alive, you must file specific documents within certain deadlines:
- Between the 5th and 6th years after registration: File a Declaration of Use and/or Excusable Nonuse under section 8.
- Between the 9th and 10th years after registration: File the first Declaration of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9.
- Every 10 years thereafter: File subsequent Declarations of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9.
In the European Union, a trademark, known as a European Union trademark (EUTM), is valid for a decade. The beauty of it? It can be renewed indefinitely, every 10 years.
So, if you’re a business in the EU, you can have peace of mind knowing that as long as you renew your trademark, it will continue to protect your brand. The renewal process is streamlined, with the EUIPO offering an online request form for convenience.
Duration at a Global Level
Madrid System for International Trademarks
The Madrid System changed the landscape for creators and businesses looking to protect their trademarks on a global scale. Imagine being able to file a single international application and pay just one set of fees to seek protection in up to 130 countries.
Sounds too good to be true, right? But that’s precisely what the Madrid System offers. It’s a convenient and cost-effective solution for registering and managing trademarks worldwide.
Now, you might be wondering, “Am I eligible to use the Madrid System?” Well, if you’re a national of, have a domicile in, or run a business in any of the 130 countries covered by the Madrid System’s 114 members, you’re in luck. The system supports you throughout the lifecycle of your trademark, from application to renewal.
But how much does it cost?
The fees include a basic fee, which is 653 Swiss francs (or 903 Swiss francs for a colored mark). There’s a silver lining for those filing an application in the IP Office of a least-developed country: a whopping 90% reduction on the basic fee.
Additional fees will depend on where you want to protect your mark and how many classes of goods and services you wish to cover. And if you’re thinking of expanding the geographical coverage or modifying or renewing your international registration, there are additional fees to consider.
World Intellectual Property Organization (WIPO) Trademarks
The WIPO plays a pivotal role in international trademark protection. While the Madrid System is a significant part of WIPO’s efforts, the organization’s broader mission is to promote the protection of intellectual property worldwide.
WIPO trademarks, like those under the Madrid System, offer a centralized process for registration and management. This centralized approach simplifies the process for creators and businesses, allowing them to focus on what they do best while ensuring their intellectual property remains protected.
Factors Affecting Duration
One of the most crucial aspects of maintaining a trademark’s validity is its continuous and proper use. Just having a trademark isn’t enough. If you’re not actively using it in the market, you might lose the rights to it. They are meant to be a sign of a particular brand’s goods or services. If they’re not used, they can’t serve that purpose.
Moreover, there are maintenance requirements to ensure protection. At the national or regional level, protection can be obtained through registration. This involves filing an application for registration with the respective trademark office and paying the required fees.
But remember, the term of registration can vary, often lasting ten years. However, it can be renewed indefinitely, provided you pay the additional fees.
Infringement and Challenges
Trademark infringement or challenges can significantly affect the duration of ownership. If another party believes your trademark infringes on theirs, they might take legal action. If they win, you could lose your rights.
In principle, a trademark registration confers an exclusive right to its use. This means the trademark can be exclusively used by its owner or licensed to another party in return for payment. But if you’re found to be infringing on someone else’s trademark rights, this exclusivity can be challenged.
There have been instances where trademarks were revoked due to infringement or non-use. Such cases highlight the importance of being vigilant and ensuring that your trademark doesn’t closely resemble another, especially in the same industry. It’s always a good idea to conduct thorough research before registering to avoid potential legal battles down the line.
Practical Considerations for Owners
We can’t stress enough the importance of managing a portfolio of trademarks over time. It’s not just about having a collection of trademarks; it’s about ensuring they remain relevant and protected. Regularly review your portfolio, check for trademarks that might no longer be in use, and consider if they need renewal or can be let go.
Moreover, with the evolving market dynamics, it’s essential to strategize to maximize longevity. This might involve rebranding, introducing new products or services under a trademark, or even licensing it to other parties.
Seeking Legal Advice
It’s crucial to consult with legal experts specializing in trademark law to protect yourself. They can provide guidance on ownership duration, and protection strategies, and even help in the registration process. It’s easy to make mistakes, like choosing a trademark too similar to another.
Legal experts can help you avoid these pitfalls and ensure your intellectual property remains safeguarded.
How is the duration of a trademark affected if it’s not actively used?
They are meant to be actively used in commerce. If a trademark is not used for a continuous period, typically around 3 years, it can be considered abandoned. This means that the owner may lose rights. However, if there’s a legitimate reason for non-use, the owner can file a declaration of excusable nonuse to maintain the trademark.
Can the duration of a trademark be extended indefinitely through renewals?
Yes, as long as it is still in use and all necessary maintenance documents and fees are submitted in a timely manner. In the U.S., after the initial registration period, the first renewal is due between the 5th and 6th year, then between the 9th and 10th year, and every 10 years thereafter.
What happens if I miss the deadline for trademark renewal?
If you miss the deadline for renewal, there’s usually a grace period during which you can still renew by paying additional fees. However, if you miss the grace period, your trademark registration may be canceled, and you’d have to reapply for registration.
Are there any circumstances where the duration of a trademark can be shortened?
Yes, if found to be infringing on another’s rights, or if it becomes generic (like “escalator” or “thermos”), it can be canceled before its natural expiration. Additionally, if the trademark is not defended against infringement or if it’s abandoned, its protection can end prematurely.
Trademarks are a testament to a brand’s identity and reputation in the market. Whether at the national or global level, understanding their duration and the factors affecting them is crucial for any creator or business.
With systems like the Madrid System and organizations like WIPO, international trademark registration and management have become more streamlined. But it’s essential to stay informed, regularly review your trademark portfolio, and seek expert advice when needed.
In the ever-evolving world of business and creativity, trademarks are a beacon of consistency and protection. Ensure they shine bright and long by giving them the attention they deserve.