In theory, forever. Or at least as long as there’s U.S. law. Whenever I ask people who they think owns the oldest living trademark on the U.S. federal register, they usually guess it's The Coca Cola Company. The answer is actually Samson Rope Technologies. They own Registration No. 0011210 for a logo of Samson wrestling a lion above the wording SAMSON. The logo was originally registered by Bostonian Jampes Tolman on May 27, 1884. But The Coca Cola Company was a good guess; their oldest living trademark on the U.S. federal register came along only a few years later. You’ll recognize the classic logo in Registration No. 0022406 instantly even though it was registered nearly 130 years ago on January 31, 1893.
The potential deathlessness of trademark registrations is one of the big differences between them and patent or copyright registrations. Although trademark registrations can be kept alive indefinitely, both patent and copyright registrations will eventually expire after a certain term of years. At that point, the intellectual property protected by those patent and copyright registrations enters the public domain, and people are free to copy it. That impacts the value of these assets.
While your trademark assets can last forever, you’ll have to take certain steps to keep them protected. Here are two of the most important things you’ll need to do to keep your trademark registration alive. (That’s enough to digest for now; we’ll cover some more another day.)
(1) File your renewal and maintenance documents on time.
Trademark registrations do not renew themselves automatically; you cannot afford to be passive here. If the USPTO registers your trademark today, then 5 years from now the window to renew your registration opens. It lasts for the one year between your 5th and 6th year anniversaries of registration. During that time, you’ll need to file certain documents with and pay filing fees to the USPTO. If you miss that window, you’ll get an extra 6-month grace period, but you’ll have to pay higher filing fees during the grace period. If you miss the grace period, your trademark registration is cancelled. That means that if you want a registration for that mark, you’ll have to apply to the USPTO all over again.
There are additional renewal periods every 10 years out from your registration date. For example, you’ll need to file certain documents with and pay filing fees to the USPTO between your 9th and 10th year anniversaries of registration, as well as your 19th and 20th year anniversaries of registration, and on and on. Again, you’ll get an extra 6-month grace period each time, but you’ll have to pay higher filing fees during the grace period. Again, if you miss the grace period, your trademark registration is cancelled.
For help with filing these documents, click here.
(2) Keep using your mark.
To renew your registration, you’ll have to be able to prove that U.S. consumers encounter your mark used in connection with the goods/services identified in your registration.
This applies to all trademark registration owners. Anyone who filed under Section 1(a) or 1(b) already had to prove they were using their mark out there in the real-world U.S. marketplace before they could get a registration. But all owners of trademark registrations, even those who filed under Sections 44(d), 44(e), or 66(a), will have to do this before their registrations will be renewed.
If you try to renew your registration but can’t show that U.S. consumers encounter your mark used in connection with the goods/services you identified, you might try to claim excusable nonuse. But understand that excusable nonuse is a very narrow exception to the requirement of actual use. Essentially, the nonuse must be caused by something beyond the owner’s control. While Covid has generated some legitimate circumstances of excusable nonuse, in practice, there is generally very little nonuse that is likely to be excused.
This information was posted on February 15, 2021 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.