Trademark Renewal Process: Key Information from Trademark Attorney Rosezena Pierce

Summary

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Earn Your Leisure Podcast: Trademark Renewal Process – Key Information from Trademark Attorney Rosezena Pierce

Hosts: Rashad Bilal & Troy Millings (iHeartPodcasts)
Guest: Rosezena Pierce, Trademark Attorney
Release Date: April 1, 2026

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Episode Overview

This episode of Earn Your Leisure dives deep into the intricacies of the trademark renewal and maintenance process, featuring expert insights from trademark attorney Rosezena Pierce. The discussion explores the timeline for trademark renewals, the pitfalls of renewal scams, the difference between trademarks and service marks, and the nuances (and costs) of international trademarking. Rosezena also compares DIY and attorney-led processes, emphasizing the value of legal counsel and strategic relationship-building for brand protection.

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Key Discussion Points and Insights

1. Trademark Renewal Basics & Timelines

• Frequency of Renewal
  • Trademarks aren’t renewed annually like corporate filings.
  • Required maintenance filings:
    • Between the 5th and 6th year after registration
    • Between the 9th and 10th year
    • Every 10 years thereafter
      (“A trademark will last as long as you use it. You will not lose it. But you do have to keep up the registration maintenance.” – Rosezena, 04:01)
• Show Ongoing Use
  • Owners must prove continued use of the trademarked mark/logo, e.g., Coca-Cola showcasing their original logo for over a century.
    (“Every 10 years Coca Cola have to show that they’re still using that same logo in order to keep that historically marked trademark.” – Rosezena, 03:30)

2. Avoiding Common Scam Risks

• Public Records Invite Spam
  • USPTO records are public, leading to increased unsolicited offers and scam attempts after filing.
• Government Will Not Contact Directly
  • “The government will never contact you. They’re going to contact your attorney, right? But the spammers and the scammers, they'll send you saying you got to maintain your registration at year four…” (04:14)
• Phone Scams – A New Issue
  • As of November 2023, phone scams impersonating government officials demanding immediate payment have increased.
  • Advice: "Do not fall for the scam. Hang up automatically and tell them, you'll contact the USPTO directly. A government official from the USPTO would never demand you pay them over the phone." (Rosezena, 04:58)

3. Understanding Service Marks vs. Trademarks

• Service marks and trademarks function identically; difference is that service marks refer to services, whereas trademarks refer to products.
  • “It’s just a word you can use interchangeably with a trademark. So you can say, I have a service mark or a trademark. It doesn’t matter.” – Rosezena, 05:24

4. International Trademark Considerations

• Complex, Costly, and Region-dependent
  • International protection isn’t automatic; it requires separate filings in each country.
  • U.S. is part of the Madrid Protocol (treaty with ~80 countries); you can apply in multiple countries via this system but must pay each country’s fees.
  • Local Counsel is Key: “I don’t recommend [using Madrid Protocol only] ... Each country has their own laws, they have their own different processes ... we want someone local of the land so that they can guide us and counsel us.” (06:53-07:35)
• Cost Differences
  • Local exchange rates can make some international applications surprisingly affordable.

5. Trademark Costs and Categorization

• Filing Fees:
  • Government filing: $250–$425 per class.
  • Law firm fees vary; Rosezena’s firm charges $1,500 for one class (filing, classification, legal research included); $1,000 extra per additional class. (“We charge $1,500 to trademark a mark. That includes the filing, that includes the class, and that includes us doing the research class.” – Rosezena, 07:50)
• Class Examples:
  • “Education and entertainment” often grouped under Class 41, covering coaching, events, podcasts, etc.

6. DIY Filings vs. Attorney-Managed Process

• Self-Serve Services
  • Online platforms (like LegalZoom) do not provide real legal counsel. Only transfer user inputs to official forms.
  • “They’re not going to offer you legal counsel and advisement... I tell them the value is in a relationship.” (09:34)
• Attorney Value
  • Better strategic guidance, holistic trademark protection, and ongoing counsel — akin to having a CPA versus filing taxes yourself.
  • “My client’s success is my success... With those type of companies, you’re filling out that paperwork... But again, like I just said, I have clients come to me ... it’s the custom made, like, it’s not this cookie cutter service.” (09:41–10:45)

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Notable Quotes & Memorable Moments

• On Ongoing Trademark Use:
  “A trademark will last as long as you use it. You will not lose it. But you do have to keep up the registration maintenance...”
  — Rosezena, 04:01

• On Trademark Scams:
  “A government official from the USPTO would never demand you pay them over the phone. You have to pay your fees through the website.”
  — Rosezena, 05:10

• On the International Process:
  “We want someone local of the land so that they can guide us and counsel us ... I wouldn’t be a good attorney if I say, yeah, let’s just put it through the system ... We need counsel and advisement from that region to help us with that.”
  — Rosezena, 07:31

• On Attorney versus DIY Platforms:
  “The value is in a relationship. You know, I run a law firm, right? I care about my clients. My client’s success is my success ... it’s the custom made ... it’s not this cookie cutter service.”
  — Rosezena, 09:34–10:45

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Important Timestamps

• [02:26] – Introduction to trademark renewals and common confusions
• [03:30] – Real-world example: Coca-Cola’s historical trademark renewals
• [04:14] – Scams targeting trademark owners; why attorney representation matters
• [05:24] – Difference (or lack thereof) between service marks and trademarks
• [06:13] – Global branding and international trademark requirements
• [07:50] – Concrete costs for filing domestic and international trademarks
• [09:34] – Evaluating LegalZoom/DYI options versus attorney relationships

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Summary & Takeaways

This episode clearly outlines the significance of proactive trademark maintenance—when and why to renew, how to stay scam-aware, and what’s at stake globally for expanding brands. Rosezena Pierce emphasizes the value of professional counsel for both domestic and international protections, distinguishing between seemingly simple paperwork and truly strategic brand stewardship. Listeners leave with actionable knowledge for tactical trademark management and the confidence to avoid costly pitfalls.

Transcript

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[Trademark Attorney (Rosalind)]

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[Trademark Attorney (Rosalind)]

So is there a time because, I mean, we've gotten emails when you have to actually renew the trademark. Do they expire at some point? And what, what is that process like when you have to renew it?

[Podcast Host / Narrator]

Yeah, that's a good question. So unlike your annual reports, because a lot of people think, well I got to do this every year, like I do my, you know, my corporations and things. No, it's a trademark registration. After you have it registered, you have to maintain the registration between your 5th and 6th year anniversary and then your 9th and 10th year anniversary anniversary and then every 10 years after, right? So what you're showing the government is that you're still using a brand. So remember I told you guys earlier, Coca Cola was registered in 1893. Now the thing is, Coca Cola, when they filed the trademark, they filed it for their actual logo at the time, right? With the cursive writing and things like that. So now every 10 years Coca Cola have to show that they're still using that same logo in order to keep that historically marked trademark. And so sometimes you'll see them come out with a retro line and things like that. And that's to continue to show the actual use. And, and you know, sometimes we get on this topic because people be like, well, should I trademark my logo or should I just trademark my name? Right? And I say sometimes you should do both. It depends. But the thing is, when you just do your logo, that's the brand, that's the trademark. So it's so important. Like a McDonald's. McDonald's did the trademark in standard characters where they own McDonald's and standard characters, but they also own the logo with the golden arches for McDonald's. Because McDonald's has change their logos about nine different times over the past 70 years. So a trademark will last as long as you use it. You will not lose it. But you do have to keep up the registration maintenance and each time you

[Trademark Attorney (Rosalind)]

renew, you pay, you pay.

[Podcast Host / Narrator]

Absolutely. But, but here's the thing, cuz I know why you're asking that question because you're probably getting a lot of spam mail asking you to pay these random people. So you got to be careful with that because, okay, when we file our trademarks, the USPTO is public record, right? So all you're going to get all type of sponsors, spam mail, you're going to get all type. And this is why it's important that you're represented by an attorney. Because the government will never contact you. They're going to contact your attorney, right? But the spammers and the scammers, they'll send you saying you got to maintain your registration at year four so you could go ahead and pay them. And then now a Lot of people, trademarks get canceled because they think they paid the government to maintain it when they paid a scammer. So it's very important, and I want to just say this. And as of November of 2023, they are now calling people when you file your trademark because the government asks for your phone number. They're calling, demanding that you pay $425 or they're going to cancel your trademark. They're acting like they're the government. And that type of do not fall for the scam. Hang up automatically and tell them, you know, you'll contact the USPTO directly. A government official from the USPTO would never demand you pay them over the phone. You have to pay your fees through the website. So what's a service mark? So a service mark is basically like, I'm a lawyer, right. And so I offer a service. It's just a word you can use interchangeably with a trademark. So you can say, I have a service mark or a trademark. It doesn't matter.

[Rorschach Murder Podcast Narrator]

It's the same thing.

[Podcast Host / Narrator]

It's the same thing. Yeah, but you wouldn't say a, a service mark for a product, basically.

[Trademark Attorney (Rosalind)]

What about. So we got the different categories here, but some of these brands are global. And so the international trademark, this is something that people have little to no knowledge about. Right. Having to trademark internationally requires a lot of things. Capital, number one. But making sure you have the trademark in each different country. Talk about that process.

[Podcast Host / Narrator]

That is so very important, especially if you are going to have an international brand. Right. I'm working with some clients in Ghana right now that has a really huge brand where they do a big, really big festival. And, you know, a lot of us are going over there for the festival in December.

[Sports Podcast Host (Carrie Champion or Jemele Hill)]

Right.

[Podcast Host / Narrator]

And so it's not only important, I think we only know those guys. Yes. And it's. But it's so important that, you know, we protect that brand not only here in the States, but also in Africa as well. But the thing is, so there is a, there's a treaty that the government has with about 80 other different countries where you can actually, it's called the Madrid Protocol, where you can actually, when you file your trademark with the, the U.S. you can apply with all these different countries, but you have to pay all these different country fees and things like that. Now that is available to you. I don't recommend it. The reason I don't recommend it is because each country has their own laws, they have their own different processes. And also, too, we want to clear those marks in those Countries. So when I have a client that wants to do an international brand, we hire local council in those countries. And you'll be surprised. Like, we did a trademark in India and, and just because of the conversion rate, it was very affordable for my client to do what he needed to do in there. But it's just a different process. And, you know, we want someone local of the land so that they can guide us and counsel us. Right. I wouldn't be a good attorney if I say, yeah, let's just put it through the system and not blindly. Right. We need to clear that and we need counsel and advisement from that region to help us with that. So how much does it cost to train mark something? So it could cost. Well, let me tell you this. The filing fees with the government starts at $250 and can go up to like 425. Right. Depending on who you work with. Right. There's a, you know, attorneys that charge, you know, from here all the way to $5,000. Now I can tell you what we charge at our firm. We charge $1,500 to trademark a mark. That includes the filing, that includes the class, and that includes us doing the research class. That's, that's the 45. So one class. Right. And so if they wanted to add additional classes, it's an additional thousand dollars.

[Trademark Attorney (Rosalind)]

If I want to do media, education, apparel, three classes. 15.

[Podcast Host / Narrator]

No, because media actually falls under the same class as education. Right. So like what I. So my favorite. Okay, I'll tell you. My favorite class is class 41. And it's the education and entertainment class. Right. And so some of my clients love me. And the reason being is because they'll come to me and be like, rosina, I want to trademark coaching. Cuz I'm a coach. I be like, okay, but you also have a podcast. You also have this chorus. You're also educating people. You do events, you. You're hiring people to come speak, and all that can be covered under that one class. So. Okay, so people can do it themselves though too, right? Like people can do it.com like that. Well, see, I didn't want to say their name. But you said it. So since you said their name fall short there as well. And they, because they're not gonna offer you legal counsel and advisement. They, they, they say you can pay more for that and they'll connect you with someone. Right. But it's, it's, it's kind of chaotic because you don't have that relationship, you know, and people always ask us what's the difference between you and Legal Zoom? And I tell them the value is in a relationship. You know, I run a law firm, right? I care about my clients. And, you know, I'm promoting my client's business. My client's success is my success, right? If I'm in a situation where I can present an opportunity to someone who can help bring my client along, I'm gonna do that for my client, right? But also, too, I'm like, so with. With those type of companies, you're filling out that paperwork, right? And they're gonna just take the information you gave them and put it into the system, right? But again, like I just said, I have clients come to me and be like, rosalind, I'm doing. I wanna do coaching. I. But then I see so much more for them, right? So it's the custom made, like, you know, it's not this cookie cutter service. I'm. It's like me having my cpa, right? I'm able to have conversations with my cpa, like, look, cpa, I want to buy a house this year. And because I want to buy a house, right? I need my taxes to show you this. And I want my, you know, my business to show profit because I want to file my taxes, yes, I really don't want to pay a lot of money, but in order to qualify to get for this loan, I need, you know, my taxes to look a certain type of way. So it's that value of the relationship instead of somebody going and filing your taxes and then writing everything off as a deduction. And now it looks like your business had no value. And now it's like, I look like a business owner who is not generating money.

[Lori Siegel]

I'm Lori Siegel, and on my new podcast, Mostly Human, I'll take you to some wild corners of the tech world. I'm about to go on a date with an AI companion at a Real world cafe right here in New York City.

[Podcast Host / Narrator]

There's no playbook for what to do when an AI model hallucinates a story about you.

[Lori Siegel]

Mostly Human is your playbook for how tech can work for you.

[Rorschach Murder Podcast Narrator]

Anyone can now be an entrepreneur. Anyone can build an app, and it's very empowering.

[Lori Siegel]

Listen to Mostly human on the iHeartRadio app, Apple Podcasts, or wherever you listen to your favorite shows.

[Podcast Host / Narrator]

1010 shots fired.

[Trademark Attorney (Rosalind)]

City hall building.

[Podcast Host / Narrator]

How could this have happened in City Hall? Somebody tell me that.

[Rorschach Murder Podcast Narrator]

A shocking public murder. This is one of the most dramatic events that really ever happened in New York City politics. I screamed, get down. Get down.

[Podcast Host / Narrator]

Those are shots.

[Rorschach Murder Podcast Narrator]

A tragedy that's now forgotten and a mystery that may or may not have

[Trademark Attorney (Rosalind)]

been political, that may have been about sex.

[Rorschach Murder Podcast Narrator]

Listen to Rorschach, Murder at City hall on the iHeartRadio app, Apple Podcasts, or wherever you get your podcasts.

[Sports Podcast Host (Carrie Champion or Jemele Hill)]

If you're trying to keep up with everything happening on and off the court, we've got you covered on the podcast. Flagrant and Funny. You wanna start with the first question for the Big Ten coach of the Year? Oh, whatever.

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[Sports Podcast Host (Carrie Champion or Jemele Hill)]

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