When it makes sense to renew older trademark registrations

Attorney Michael Lasky discusses the challenges and advantages of renewing trademark registrations.

Contact Michael Lasky

Email: [email protected]

Phone: (404) 441-1750 or (952) 253-4106

Transcript:

If you’re watching this video it’s probable that you have a trademark that’s come up for renewal and the question is should you renew it? It would seem a no brainer but the question is really is it going to cost too much and is it impossible to renew. Let’s talk about those two issues. Obviously, cost, when you renew something you have to pay a fee to do so but is it worth doing it especially if you’ve on to a different version of the mark and that’s where the impossibility question comes into play.

Take McDonald’s, I had never seen this but McDonald’s has gone quite an evolution. I guess I would remember most of these but suppose you had registered that one with the figure of – I don’t know what that figure is, anyway, back in 1948 and it is your trademark but you have stopped using it now you’re using something entirely different should you renew it? Well, the first question is could you renew it and the answer is unless you have continued to use it you cannot renew a figure trademark because you have changed the figure. Therefore, you should have registered as a word too but let’s assume you didn’t and even if you did it’s always good to have more registration.

So can you renew it? The answer is no unless you do something explicit, and you should do this and that is retain all of these trademarks in a small, diminutive part of your website and on your product packaging as your prior trademarks. I know your brand manager’s going to say can’t do that, but here’s why you should. Two things you get when you renew a trademark you get incontestability. The trademark cannot be canceled by a prior user and they’re out there that you don’t even know about them but you can prevent them from canceling your trademark if they’re incontestable. But if you let your trademark go abandon because you didn’t renew it, you gotta start all over and it takes at least five years to become incontestable so your clock is reset every time you start over.

The second thing is called family of trademarks. This is a big deal you probably never heard of and it’s this: In the United States trademark office they will do a search of your trademark against other trademarks when they are filed and see if they are confusingly similar. If your trademark is a family of trademarks, in other words, you have all of these symbols and words they’re all owned by the same company the trademark office will assume that you have a strong brand and they will enforce you for free by blocking others. If you have a single trademark, they are not as proactive so a family of a trademarks basically gets you better protection.

So take the example of Intel they’ve migrated their logos over the years but if they could maintain the registrations on all of them, which is quite simple to do then they will have a family of trademarks. Same thing with Nike they had migrated quite a bit to the point where the swoosh is the dominant trademark. But Nike is a word and the combination is still important I would keep them alive if I could.

Here are some other examples, BP has migrated enormously to the point where B and P are insignificant but I would never let, at least some of these go. And Kentucky Fried Chicken well they don’t refer to fried anymore for various reasons but Colonel Sanders is still prominent. If you could keep these, they will give you that family of trademarks and each one of these will become incontestable after five years. Better to not let them go but to keep that you’ve got to be proactive to retain the usage of the mark so it can be renewed.

So should you renew your trademarks? If it’s not impossible and it’s not prohibitively expensive, it will pay you back well. I hope this is helpful. Thanks very much.