1602    Duration and Maintenance of Registrations

The Trademark Act of 1946, 15 U.S.C. §§1051 et seq. , became effective on July 5, 1947, and as of that date the Trademark Acts of 1881, 1905, and 1920 were repealed insofar as they were inconsistent with the Act of 1946.  Trademark Act §46(a), 15 U.S.C. §1051 note.

The duration of registrations has varied, depending upon the Act under which the registration was issued.   See TMEP §§ 1602.01 , 1602.02 , 1602.03 , and 1614 .

1602.01   Act of 1946  

Registrations Resulting From Applications Under §§1 and 44

The Trademark Law Revision Act of 1988, Pub. L. No. 100-667, 102 Stat. 3935, which took effect on November 16, 1989, amended §9 of the Trademark Act of 1946 to reduce both the duration of registration and the term of renewal from twenty to ten years.  All registrations issued or renewed on or after November 16, 1989 are issued or renewed for a ten-year period.

Thus, registrations issued under the Act of 1946 on or after November 16, 1989, remain in force for ten years, provided that affidavits or declarations of use or excusable nonuse under §8 of the Act are filed.  37 C.F.R. §2.181(a)(2).  See 37 C.F.R. §2.160(a) and TMEP §1604.04 regarding the due dates for affidavits or declarations of use or excusable nonuse.  Registrations issued under the Act of 1946 before November 16, 1989 remain in force for twenty years, provided that an affidavit or declaration of use or excusable nonuse was filed during the sixth year after the date of registration.   37 C.F.R. §2.181(a)(1).  See TMEP §§1604 et seq. regarding affidavits or declarations of use under §8 of the 1946 Act.

Effective November 16, 1989, registrations under the Act of 1946 may be renewed for periods of ten years from the end of the expiring period.  37 C.F.R. §2.181(a).  Before November 16, 1989, registrations under the Act of 1946 were renewed for twenty-year periods.  The applicable term for renewals that were processed during the transition depends on whether the registration was renewed before or after November 16, 1989.  If the registration was renewed before November 16, 1989, the renewal term is twenty years; if the registration was renewed on or after November 16, 1989, the renewal term is ten years, regardless of the date on which the renewal application was filed.   In re Maytag Corp ., 21 USPQ2d 1615 (Comm’r Pats. 1991).  See TMEP §§1606 et seq. regarding renewal under §9 of the 1946 Act.

Registered Extensions of Protection

Section 9 of the Trademark Act does not apply to registered extensions of protection of international registrations to the United States.  Renewal of an international registration and its corresponding extension of protection to the United States must be made at the International Bureau of the World Intellectual Property Organization ("IB"), in accordance with Article 7 of the Madrid Protocol.  37 C.F.R. §7.41(a).  See TMEP §1614 for further information about renewal of international registrations.

Section 71 of the Act, 15 U.S.C. §1141k, requires the periodic filing of affidavits or declarations of use in commerce or excusable nonuse for registered extensions of protection.   See TMEP §1613 regarding due dates and requirements for §71 affidavits or declarations.

1602.02   Acts of 1881 and 1905

Registrations under the Act of 1905 were issued for an original term of twenty years, and were renewable for twenty-year periods.  Registrations under the Act of 1881 were issued for an original term of thirty years, and were renewable under the Act of 1905 for twenty-year periods.

Effective November 16, 1989, registrations issued under the 1905 Act and the 1881 Act are renewable under the 1946 Act for periods of ten years.  Before November 16, 1989, registrations issued under the 1905 Act and the 1881 Act were renewable under the 1946 Act for periods of twenty years.  Trademark Act §46(b), 15 U.S.C. §1051 note; 37 C.F.R. §2.181(b).

A registrant under the 1905 Act or the 1881 Act may file an affidavit or declaration under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), to claim the benefits of the 1946 Act, without affecting the term of the registration.   See TMEP §1603 .  Under §8(a)(1) of the 1946 Act, 15 U.S.C. §1058(a)(1), if the registrant claims the benefits of the 1946 Act, the registrant must file an affidavit or declaration of use or excusable nonuse within the sixth year after publication of the notice of the §12(c) claim in the Official Gazette , to avoid cancellation.  See TMEP §§1604 et seq. regarding affidavits or declarations of use or excusable nonuse.

Section 8(a)(2) of the 1946 Act, 15 U.S.C. §1058(a)(2), requires that owners of marks registered under the Acts of 1905 and 1881 file affidavits or declarations of use or excusable nonuse at the end of each successive ten-year period following the date of registration, even if the registrant does not claim the benefits of the 1946 Act under §12(c) of the Act.  However, this requirement does not apply to a registration renewed for a twenty-year term (i.e., a registration renewed prior to November 16, 1989) until a renewal application is due.   See TMEP §1604.04(b) .

1602.03   Act of 1920

The Act of 1920 did not specify any term of registration.  However, the Act of 1946 provided that 1920 Act registrations would expire six months after July 5, 1947 (the effective date of the 1946 Act), or twenty years from the date of registration, whichever was later.  A 1920 Act registration may not be renewed, unless renewal is required to support a foreign registration.  In that instance, the registration may be renewed on the Supplemental Register for a ten‑year period, in the same manner as a registration issued under the 1946 Act.  Trademark Act §46(b), 15 U.S.C. §1051 note; 37 C.F.R. §2.181(c).  See TMEP §§1606 et seq. regarding renewal.

The requirement that renewal be necessary to support a foreign registration applies to all renewals of a 1920 Act registration, not just the first renewal.   Ex parte U.S. Steel Corp. , 157 USPQ 435 (Comm’r Pats. 1968).

The application for renewal of a 1920 Act registration should identify the foreign registration(s) that the renewal is needed to support, the country, the name of the present owner, the registration number, and the date of registration, and must show that the foreign registration(s) is currently in force.

Under §8(a)(2) of the 1946 Act, 15 U.S.C. §1058(a)(2), an affidavit or declaration of use or excusable nonuse under §8 is also required at the end of each successive ten-year period following the date of registration.  However, this requirement does not apply to a registration renewed for a twenty-year term (i.e. , a registration renewed prior to November 16, 1989) until a renewal application is due.   See TMEP §1604.04(b) .

1602.04   Trademark Law Treaty Implementation Act Changes

The Trademark Law Treaty Implementation Act of 1998 ("TLTIA"), Pub. L. No. 105-330, 112 Stat. 3064, changed the requirements for filing affidavits or declarations of use or excusable nonuse under 15 U.S.C. §1058 ("§8 affidavits"), and renewal applications under 15 U.S.C. §1059 ("§9 renewal applications"), effective October 30, 1999.   See Post Registration:  Changes to Requirements for Maintaining Trademark Registrations , at 1228 TMOG 187  (Nov. 30, 1999), for a discussion of these changes.

TLTIA did not change the duration of registrations.  See TMEP §§1602 et seq . regarding the term of registrations.