Trademark Renewal For Old Product No Longer Produced

• Applicant: Computer Hardware Company
• Business: Automation Products Design and Manufacturing
• Country/Region: Taiwan, China
• Applying for: Trademark Renewal
• Challenges:
  • The trademark had not been used in several years since its original approval in 2006

BACKGROUND

Computer Hardware Company sought renewal for a trademark it had previously been approved of by the United States Patent and Trademark Office. The trademark was initially approved in 2006 but was currently not being used on the company products. Even though the company had not recently been using the trademark on its products, it still felt that it would be beneficial and advantageous for the trademark to be renewed and still active. Without renewal, the trademark would simply be canceled. As such, the company came to us at Tsang and Associates on April 28, 2016 hoping that we could guide their filing of a Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal of Registration of a Mark under Sections 8 & 9. We received approval on August 2, 2016.

KEYS TO SUCCESS

When Computer Hardware Company came to us, we strongly felt that we could guide an effective and thorough process in overcoming any potential obstacles that were present. According to the USPTO regulations, we were required to show that the trademark was still in use in addition to applying for the renewal of registration. In order to tackle both requirements, we helped the company to file a Combined Section 8/9 Filing. Challenges arose because the trademark that was to be renewed had not been in use by the company on its products for several years. As necessary for the filing, we needed to upload a photograph indicating that the trademark appeared on the products.

The company had stopped putting the trademark on its products several years ago and thus currently had no product displaying the trademark. In order to overcome this obstacle, we guided the company through the entire process of producing and manufacturing a product labeled with the approved trademark. We were thus able to upload a photograph of this product to satisfy the USPTO requirement. After fulfilling the usage part of the renewal process, we then assisted the company in the renewal of the registration.

Throughout this entire renewal process, we were careful to adhere to the dates and deadlines for renewal. Otherwise, the registration would have been canceled, forcing the company to lose its trademark of ten years. The company was extremely thankful to have our professional assistance in the renewal procedure, ensuring that all necessary steps were taken for a successful trademark renewal.

OUTCOME 

After compiling all of the necessary components, we filed the Combined Section 8/9 Filing on April 28, 2016. We received approval on August 2, 2016.