Can you renew an expired trademark?

What do you do if you have forgotten to renew your trademark? If you forget this important step, take heart because there are ways for you to fix it.

There have been a few famous cases of companies forgetting to renew trademarks in recent years. For instance, Sony forgot to renew its Bloodborne & Kill Strain trademarks, which are associated with popular games. This also happened with its Last Guardian trademark.

The official reason for Sony lapsing its trademarks was stated as “abandoned – no statement of use or extension request”, which was filed upon receipt of the Notice of Allowance. Things were probably very tense for a while, but it worked out for Sony in the end. The company contacted the United States Patent and Trademark Office (USPTO) and was allowed to fix the error rather than permanently abandon all of its hard-fought brand rights. 

What should I do if I forgot to renew my trademark or brand registration?

Although it varies from country to country, most trademark offices offer trademark registrations in increments of 10 years. This means you must pay a trademark renewal fee every 10 years to retain brand protection. If you have not submitted the paperwork and paid the fees in time, there is still recourse you can take to care for your trademark and all associated products and services. It may not seem fair, but the trademark office will not send you any sort of reminder when it is time to renew your trademark. Therefore, you must be diligent to ensure you remember to renew your mark every 10 years, for example, by using your IP management portal.

Can a lapsed trademark be reinstated or renewed late?

If your trademark has expired, you will have to contact the relevant trademark office. So long as no one else has noticed that your trademark has lapsed and purchased it for themselves, you will still have the option of keeping it. Depending on the territory or the date at which you noticed the lapse, you may be able to benefit from a grace period – or you may have to file a new application for the same trademark, and go through the waiting period all over again.

What are the consequences of failing to renew a trademark on time?

One of the hidden dangers of forgetting to renew is that the rules for what you wish to trademark may change. If your brand has lapsed and you need to register it again, you could lose it permanently if someone has already filed a conflicting mark or your application no longer fits into the current rules. The application forms will need to be completed as though you never applied for protection of your trademark, and it will go through the same process as it did originally before you can claim it as your own.

Is there a grace period for renewing expired trademarks?

Thankfully, many trademark offices offer a grace period in which you can renew your trademark registration (often within six months of the registration expiry). This allows you to correct your mistake before time has made it impossible to proceed; however, you will need to pay an additional late fee and supply additional paperwork, such as the Affidavit of Use (a sworn statement describing the trademark and how it is currently used for commercial purposes) required by the USPTO.

How can I avoid missing future trademark renewal deadlines?

In the grand scheme, it is not expensive to renew trademark rights. A few hundred dollars seems like a lot at the start, but after you have been using your trademark for a decade (provided that it has given you success and profits), this will seem like a small price to pay. To avoid the risk of lapsing those rights, we recommend working with a renewals specialist who can provide timely reminders and commercial advice when your trademark and design renewals become due.

To find out more about the trademark renewals process, speak to your attorney or contact our team.