It is here that many New York renewal filings go wrong, with a variety of specimens including a screenshot of a newly designed website, packaging or promotional materials that present the mark differently from the original specimen, that can lead to a specimen refusal in the USPTO post-registration office action.

For New York’s fashion industry in particular, specimen compliance is an ongoing renewal issue for brands because brand visuals are expected to change as a business grows. An updated logo must still look like the registered mark; not like an entirely new mark that would require a separate application. united states trademark registrations and law (USTML) carefully reviews the renewal specimens for all New York clients prior to filing to ensure it meets current US Patent and Trademark Office (USPTO) requirements and matches the registered mark’s current use in commerce.

Trademark renewal in New York is also an opportunity not to be overlooked. The Section 15 Declaration of Incontestability, submitted with the Section 8 Declaration after five years of continuous use after the mark is registered, converts the mark into an incontestable trademark. A legal certification that limits the basis upon which a third party can invalidate the mark. In New York’s Southern District, the busiest jurisdiction for trademark litigation in the United States, an incontestable mark is a much more valuable legal asset than a regular registration.

For New York fashion designers, entertainment and finance firms that have established years of continuous commercial use of a registered name, seeking incontestability at renewal is a significant enhancement of the brand’s legal portfolio.