Trademark registration and renewals

Trademark or service mark registration requires filing at the United States Patent and Trademark Office a business name, brand, or logo that you use in commerce.  Once your mark is registered by our Colorado trademark lawyers, you gain exclusive federal rights to your name, slogan or logo.  By registering your trademark or service mark at the USPTO, you can also strengthen your own position by building your brand without worrying about competitors taking your brand.  Even if a competitor enters the market using a mark having a similar sound, appearance, or meaning to your protected mark, you can request that they cease from using the mark in commerce.  It is much easier to assert your brand against a business competitor with a valid or pending trademark registration from the USPTO than without. It is also important to consider whether your mark is already being used within the State of Colorado. If your mark is already being used, then you should talk to one of our Denver trademark attorneys regarding possible filing or opposition options.

Trademark Renewals

It is important to remember to renew your trademark registration after five years if you are still using the mark in commerce.  If you wish to continue using your trademark, then it must be renewed after the fifth year.  After you renew your mark for the first time, the next renewal is the tenth year.  After the second renewal period, the USPTO requests renewal every ten years.  Don’t let these important dates pass, let our law firm remind you when it is time to renew and let us do the renewal work for you.

There are four common renewal application scenarios that the law firm of Wessels & Arsenault can prepare on your behalf:

1. Converting from an intent-to-use to in-use

Once your trade name has been actively used in commerce, then the USPTO must be notified using the “Statement of use / amendment to allege use” form.  The cost is $100 to the USPTO per class and a specimen of use for the USPTO.  If you do not file this form, then your intent-to-use trademark will eventually be canceled.   Our law firm can prepare and file this form on your behalf for $250.00. Contact our firm today if you need to convert your intent-to-use application to a mark used in commerce.

2. Renewing an intent-to-use trademark application

If you filed an intent-to-use trademark application, then you have six months to register that your mark is now actively in use.  Failure to submit documentation to the USPTO of your active use in commerce will result in cancellation of the trademark.  If it is clear that you won’t be prepared to use the mark in commerce by the time the six month period lapses, then we can help file the Extension of use form on your behalf.

Filing for the extension provides an additional six months to file a “statement of use” form to the USPTO.  The USPTO charges $150 per class to extend the intent-to-use application.  Our law firm can prepare and file this form on your behalf for $250.00.  Please contact our law firm if you are interested in this service.

3. Five year trademark renewal

To maintain your trademark rights, it is necessary to renew your registration between the fifth and sixth years of registration.  Knowing the date of registration for your trademark is important for knowing when to file your renewal documentation.  If you do not file your five year renewal, then you WILL lose your trademark rights on the mark requiring renewal.  The USPTO requires that you submit a Section 8, or a Section 8 and 15 affidavit.  Doing so will place the USPTO on notice that your mark is still used in commerce.  Based on the class, the five year renewal fee charged by the USPTO is $100 or $300.

4. Ten year trademark renewal or later

To maintain your trademark rights, it is necessary to renew your trademark again after the five year registration period.  After the five-year registration renewal, trademarks need to be renewed between the ninth and tenth year of registration.  The cost for the ten-year trademark renewal is $500.00 per class.  After the ten-year renewal, trademarks must be registered every ten years after that.

Failure to renew your trademark between the ninth and tenth years from the registration date could result in loss of your trademark rights, so make sure that you pay attention to these important dates.  For peace of mind, you can also retain the services of our professional trademark attorneys to make sure that the dates are properly noted and that you are informed of any  upcoming dates.

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Wessels & Arsenault, L.L.C.

8001 Arista Pl. Suite 400

Broomfield, CO 80021

(303) 459-7898

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