How Long Does a Trademark Registration Last?
In regards to the length of time a trademark lasts (the term of the trademark), trademarks should FIRST be renewed after the initial five year term with the USPTO, but before the 6th anniversary of the original filing. This initial renewal is done via a “Section 8 Declaration.” A Section 8 declaration is much easier to process than the initial filing, though it does include a filing fee. Then at the 10 year mark (technically between the 10th and 11th anniversaries of the original filing), a different type of renewal (a Section 8 AND a Section 9) should occur. And then the renewal should occur every ten years thereafter. Assuming the renewal process is completed every ten years (five years originally), trademark protection can theoretically last forever (unlike copyright and patent protection, which have set limits). However, trademark protection can be lost if the mark goes unused for an extended period of time. In that case, a new and different company could theoretically receive a trademark in the same class for the same word or image.
In addition, a “Declaration of Incontestability” can be filed after a mark has been in the Principal Register for five years, and provided the mark does not have any cases pending against it or judgments handed down against it. An incontestable mark is an (almost) bulletproof way to protect a mark. Only in rare instances can it be challenged.
Interestingly, at least in the United States, trademarks cannot be sold from one party to another without also selling some type of underlying asset. So while a trademark could be sold with an entire business, one could not buy the Coca-Cola name and then start selling a drink called Coca-Cola despite no affiliation with the company (FYI, it’s safe to say the Coca-Cola name is not for sale regardless!). In cases where a client of ours is considering purchasing another business, we recommend the client and their IP attorney have Web Defense Systems perform a complete review of the selling company, to ensure there aren’t competitive marks with prior use, that its trademarks are up to date (if applicable), etc.