Trademarks can last literally forever, at least as long as commerce exists. There are some trademarks that have been in use for hundreds of years. Some trademarks currently in use in the U.S. are over 100 years old. Examples include John Deer, Coca-Cola, and others.

We must distinguish between the trademarks themselves and the registration of trademarks. Registration of trademarks is a relatively recent innovation with respect to commercial activities. Registration of trademarks only dates to the mid-to-late 1800s, whereas, as noted, there are a few trademarks much older than that.

With respect to registration, in theory, trademark registrations can also last forever as long as proper steps are taken to renew said registrations.

There are several keys to a trademark’s longevity. The first is used in commerce. Even without being registered, a trademark that identifies the commercial source of some product or service will last indefinitely as long as the trademark is being used. This is why there are some trademarks still in use after hundreds of years. Year after year, consumers will see (or hear) the trademark and associate it with a particular product or service.

The next key is protecting the trademark from infringement. Again, even if the trademark is not registered, the owner and user of a trademark must police against infringement. If another company — a competitor, for example — starts placing your trademark on their product, eventually, that will destroy the value of your trademark. Cease and desist letters, litigation, and even governmental action are some of the tools that can be used to protect against infringement.

Another key to a trademark’s longevity is protecting the trademark against it becoming generic in the minds of consumers. Just as one example, “Zipper” was once a trademark used in commerce for a type of fastening device. Over the years, however, the word became so commonly used for that type of fastener that the word stopped, meaning the particular manufacturer of that product. A more modern example is GOOGLE, which has entered common word use as a term for searching the internet. GOOGLE remains a solid and valid trademark, but its owner has had to expend great efforts to avoid the “genericide” of its trademark. Tools here may involve advertising, marketing, litigation, contacting news outlets and magazines to ensure that they are identifying the word as a trademark, etc.

As for registration, there are two requirements for maintaining registration status. The first is used in commerce or excusable non-use. The second is filing proper renewal papers with the relevant registration agency. For the U.S., that is most often the U.S. Patent and Trademark Office. In brief summary, the first registration period is for about six years. Thereafter, the registration periods are in 10-year increments. So, between the fifth and sixth year after the initial registration, the registration must be renewed. Then, the registration must be renewed every 10 years or so after that. Renewal involves filing paperwork, paying fees, and providing evidence that the trademark has been used in commerce. These are called Declarations of Use or Excusable Nonuse.

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

USPTO Maintenance Filings: Section 8 Declarations and Section 9 Renewals

The USPTO’s trademark registration maintenance system requires two types of filings: maintenance filings (Section 8 Declarations of Use) and renewal filings (Section 9 Renewal Applications). Understanding the distinction and timing requirements is essential to preserving a registration.

A Section 8 Declaration of Use must be filed between the fifth and sixth year after the initial registration date. This filing requires the registrant to: (1) declare that the mark is in use in commerce (or that nonuse is excusable); and (2) submit a specimen showing current use of the mark in commerce. If the Section 8 filing is not made within the six-year window (or within a six-month grace period subject to a late fee), the registration is automatically cancelled. There is no mechanism for revival after the grace period expires — the registrant must file a new application and restart the registration process.

A Section 9 Renewal Application must be filed between the ninth and tenth year after initial registration (or the ninth and tenth year of each subsequent renewal period). The renewal requires a declaration of continued use (or excusable nonuse) and payment of filing fees. Beginning with the first renewal, a combined Section 8 and Section 9 filing is required between the ninth and tenth year, covering both the maintenance obligation and the renewal obligation simultaneously.

Incontestability: The Five-Year Milestone and Its Benefits

One of the most significant — and frequently overlooked — benefits of trademark registration is the path to incontestability. Under 15 U.S.C. § 1065, a trademark registered on the Principal Register for five consecutive years that has been in continuous use in commerce is eligible for “incontestable” status, claimed by affirmatively filing a Section 15 Declaration.

An incontestable trademark registration cannot be challenged on grounds of mere descriptiveness or lack of secondary meaning — two of the most common defenses in trademark disputes. The challenger is limited to a narrow list of permitted defenses: the mark was obtained by fraud; the mark was abandoned; the mark has become generic; the mark is being used to misrepresent the source of goods or services; or the challenger has a prior, senior use right. Incontestability substantially strengthens the trademark owner’s litigation position and significantly increases the registration’s defensive value.

Non-Use and Abandonment: The Risks to Trademark Longevity

While trademarks can last indefinitely, non-use can destroy trademark rights in as little as three years. Under 15 U.S.C. § 1127, a trademark is deemed abandoned when “its use has been discontinued with intent to abandon.” Nonuse for three consecutive years constitutes prima facie evidence of abandonment — the trademark owner bears the burden of rebutting the presumption of abandonment by demonstrating that the nonuse was excusable (due to temporary interruption of business, supply chain disruption, litigation, or regulatory obstacles) and that there was no intent to abandon.

Businesses that put a trademark on hiatus — while reformulating a product, launching in a new market, or during a merger — must document the reasons for nonuse carefully to rebut an abandonment challenge. Active monitoring of trademark use by the organization’s business units, combined with regular communication to legal counsel about planned changes to product lines or services, is the best preventive strategy against inadvertent abandonment.

Revision Legal’s trademark attorneys manage comprehensive trademark portfolios for clients of all sizes, including maintenance filing calendars, incontestability filings, and use monitoring programs. Contact us at (855) 473-8474 to ensure your trademark registrations remain in full force.