King Patent and Business Law, PLLC

Protecting your ideas, your brand, and your business
Protecting your ideas, your brand, and your business

Trademark Renewal and Maintenance

Once you have a trademark registered with the United States Patent and Trademark Office (USPTO), you have to renew that registration regularly to keep the rights given by registration.

If you don’t renew your registration, your registration will expire, and the USPTO will cancel your registration.

Year 5, Year 10, and Every 10 Years

In the 5th year following initial registration, between 9-10 years after registration, and every 10 years after that, you must file documents with the USPTO to renew your registration. You must also show proper current use of your registered mark.

How We Help With Renewal

Filing renewal documents, whether we worked with the client to get initial registration or they come to us just for renewal assistance.

Obtaining appropriate examples of current use so the USPTO doesn’t reject the filings.

Reviewing the list of goods and services in the registration with the client and see whether any deletions are needed. If any additions are needed, we work with clients to file a new application for those additions (you can’t add goods or services at renewal).

State Renewal

State-registered trademarks must be renewed as well. We are able to assist with renewal in Illinois and Georgia.

Illinois-registered trademarks must be renewed every 5 years. Examples of current use are required just like for federal registrations.

Georgia-registered trademarks must be renewed every 10 years. Examples of current use are not required.

Updating Contact Information

You must keep your contact information updated with the United States Patent and Trademark Office (USPTO). Otherwise, you may not receive important notices from the USPTO vital for keeping your trademark registration active.

We assist with changes of address, email, business name, personal last name, etc.

Recording Assignment / Change of Ownership

If you sell your trademarks or otherwise assign them to someone else, you must inform the USPTO.

We assist with properly notifying the USPTO of such changes.

Top Things to Know about Trademark Renewal and Maintenance

  • Registration isn't the end. It's the beginning of rights that must be maintained through proper use, maintenance, and renewal.
  • Improper maintenance could prevent you from knowing information you need to take action about to keep your rights active.
  • Changes in ownership must be registered with the USPTO.
  • Important renewal dates are 5 years after registration, 10 years after registration, and every 10 years after that.
  • Failure to file proper renewal documents will result in cancellation of your registration and loss of rights.

Make Sure You're Using Your Mark Correctly for Easy Renewal

To help you make sure you are prepared properly for renewal, we offer Trademark Review of Use Services to review your use of the mark and advise you about any changes necessary for successful renewal.
Don't Wait!

Fees

We work using flat rates. You will know up front what the total cost will be for the services most appropriate for you, barring unforeseen circumstances.

Common fees are listed in the downloadable fee schedule. Additional attorney and USPTO filing fees may apply to these listed fees. The fees listed here are starting points. Fees ultimately depend on the complexity of the work required.

Other Trademark Services

We can file your federal and/or state (IL and GA) applications.

We also help with responses to refusals (Office Action) and appeals of final rejections,

We perform searches and analyze the results to spot issues that may prevent or cause other problems for registration and advise you about your options to address them.

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We review how you use your mark after registration to ensure your use helps retain your full rights and makes renewal easy (you have to show proper use at renewal).

Yearly, quarterly, monthly, and weekly service is available.

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We perform and analyze monthly searches of new federal registration filings to see whether anyone is attempting to register a mark that is possibly infringing on yours.

To see whether there may be other infringing use of marks, searches of social media, domains, and internet use are also available.

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We assist with filing maintenance and renewal paperwork for both federal and state (IL and GA) registrations.

This includes assistance with gathering specimens to show ongoing proper use of the mark.

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We draft and review licensing agreements to permit others to use your marks in exchange for a fee or to allow you to use others’ marks in exchange for a fee.

We also draft and file assignments and transfers of rights to others, for single marks, a portfolio of marks, or as part of the purchase or sale of a business

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We can send and help you respond to cease-and-desist letters.

We can also assist you with cancellations, oppositions, etc.

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