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The Zest

A Trademark Can Last Forever. Most of the Work Is Not Letting It Lapse.

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A trademark can last indefinitely. There's no built-in expiration the way there is for a patent or a copyright. The rights continue for as long as you keep using the mark in business, and a federal registration stays alive as long as you file the required maintenance documents on schedule. Stop using the mark, or miss the filings, and the protection can end much sooner.

So the real question is what keeps it alive. The answer has two parts: use and paperwork.

Use is what keeps a trademark alive

In the United States, trademark rights come from use. The USPTO puts it this way: you become a trademark owner as soon as you start using your trademark with your goods or services. Those rights exist without any registration, they're often called common law rights, and they're limited to the geographic area where you're actually doing business.

Because they come from use, they last as long as the use does. A restaurant that has traded under the same name for sixty years can still have rights in that name in its area, registered or not. There's no renewal form for common law rights and nothing to file. There's also no certificate, no public record, and no nationwide reach, which is the tradeoff.

Registration adds to those rights. It doesn't replace the need to use the mark. That's true for the whole life of the registration.

A federal registration runs in 10-year terms

Under the Lanham Act, a federal registration remains in force for 10 years, and it can be renewed for another 10 years, and another, with no limit on the number of renewals.

Each term comes with conditions. The statute requires the owner to file a sworn declaration that the mark is still in use, called a Section 8 declaration, at two kinds of points:

  • once in the year before the sixth anniversary of registration, which the USPTO describes as between the fifth and sixth years, and
  • again in the year before the end of every 10-year period, filed together with a Section 9 renewal application.

In plain terms: one filing between years five and six, another between years nine and ten, and then one every ten years after that. Each deadline has a six-month grace period that costs an extra fee. The declaration has to identify the goods and services the mark is actually still used on and include current proof of that use.

If the filings aren't made by the end of the grace period, the statute says the registration shall be canceled, and the USPTO says it will be canceled or deemed expired. At that point the registration is gone, and getting registered protection back generally means applying again from the start.

The year-five-to-six deadline is the one that catches people, because nothing about a certificate that says "10 years" suggests something is due in the middle. I went through the dates, the fees and the ways people miss them in Your Trademark Registration Can Die of Neglect, so I'll leave the mechanics there.

Five years in, a registration can get stronger

Time doesn't only create deadlines. It can also strengthen a registration.

Under Section 15 of the Lanham Act, once a mark on the Principal Register has been in continuous use for five consecutive years after registration and is still in use, the owner can file a declaration claiming what the statute calls an incontestable right to use the mark for those goods or services. It has conditions: there can't be a final decision against the owner's claim to the mark, and no proceeding challenging it can be pending. The declaration is filed within one year after any five-year period of continuous use.

"Incontestable" is stronger than it sounds in some ways and weaker in others. It cuts off some of the arguments someone could otherwise use to attack the registration. It doesn't make the mark untouchable. The statute keeps several grounds for cancellation open at any time, and it says no incontestable right can be acquired in a mark that is the generic name for the goods or services.

A Section 15 declaration is optional. Skipping it doesn't end a registration. If the mark qualifies between the fifth and sixth years, the USPTO lets you combine it with the first Section 8 declaration in one form.

How a trademark ends: abandonment

A trademark doesn't run out. It gets lost. The Lanham Act calls this abandonment, and it describes two ways it happens.

The first is nonuse. A mark is deemed abandoned when its use has been discontinued with intent not to resume. Intent can be inferred from the circumstances, and nonuse for three consecutive years is prima facie evidence of abandonment. That means three straight years of nonuse creates a presumption against the owner, who then has to come forward with evidence to overcome it. And "use" here means bona fide use in the ordinary course of trade, not use made merely to reserve a right in a mark.

This applies whether or not the mark is registered, and it can happen in the middle of a 10-year term. A registration for a mark that's no longer in use can be challenged and canceled even though no deadline has been missed. It comes up most often after a rebrand or a pivot, when the old name quietly stops appearing on anything. I wrote about that in abandonment after a rebrand.

The second way is losing what makes the name a trademark at all. The statute treats a mark as abandoned when the owner's conduct, including things the owner fails to do, causes the mark to become the generic name for the goods or services or otherwise to lose its significance as a mark. Keeping an eye on how others use the name is part of preventing that, which is the subject of watching the name after registration.

How that compares with copyrights and patents

The other main kinds of intellectual property come with a clock.

Copyright lasts a long time, but it ends. For works created today, the Copyright Office says protection generally lasts for the life of the author plus 70 years. For works made for hire, and for anonymous and pseudonymous works, it's 95 years from first publication or 120 years from creation, whichever expires first.

Patents are shorter. A utility patent's term generally ends 20 years from the date the application was filed. A design patent lasts 15 years from the date it's granted.

A trademark is the only one of the three that can outlive its owner, the owner's grandchildren and the business's original product line, with no outer limit. It's also the only one that can be lost simply by not being used. For more on how the three differ, see trademark, copyright or patent.

If you'd like to talk about protecting a name you plan to keep for a long time, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

Book a free 15-minute discovery call with the attorney (opens in a new tab)

(No legal advice is given on the discovery call. It's a chance to tell me what you're building and hear how the process works.)

Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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