The Section 8 and 9 Renewal is a combined document filed with the United States Patent and Trademark Office (USPTO) for the purpose of maintaining and renewing a trademark registration. The Section 8 and 9 Renewal is only applicable to trademarks that are registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration). If your trademark is registered with the USPTO under Section 66(a) (extension of protection through the Madrid Protocol), then you would instead (1) file a Section 71 Declaration of Use with the USPTO, and (2) renew your international registration directly with the World Intellectual Property Organization (WIPO).
When Must I File the Section 8 and 9 Renewal?
You must file the first Section 8 and 9 Renewal between the ninth and tenth year of registration. So, for example, if your trademark registration issued on January 21, 2020, you would have to file the Renewal between January 21, 2029 and January 21, 2030.
Even so, the USPTO provides a six-month “grace period” in which to file the Section 8 and 9 Renewal. So, in the above example, you would really have until July 21, 2030 to file the Renewal (six months after January 21, 2030). Because the government filing fees are much higher if you file within the grace period, I would strongly encourage you to file the Section 8 and 9 Renewal prior to the start of the grace period.
A second Section 8 and 9 Renewal must be filed between the 19th and 20th year of registration. So, in the example above, the second Renewal would need to be filed between January 21, 2039 and January 21, 2040. If you include the grace period, the Renewal would need to be filed by July 21, 2040. A Section 8 and 9 Renewal must then be filed every subsequent ten years (calculated from the registration date) in order to keep your trademark registration active.
What is Required to File the Section 8 and 9 Renewal?
The Section 8 and 9 Renewal requires the following:
- A verified statement that your trademark is currently in use in commerce in connection with the goods and/or services listed in your registration (unless you’re claiming excusable nonuse)
- A request that your registration be renewed for the goods/services identified in your registration
- Submission of at least one recent specimen of use per class of goods/services listed in your registration (unless you’re claiming excusable nonuse)
- Payment of the government filing fees (which depend on the total number of classes listed in your registration)
Please be aware that if your trademark is no longer in use in connection with all of the goods and/or services recited in your registration, you must delete from your registration all goods/services you’re no longer offering or providing.
If your Section 8 and 9 Renewal satisfies all four of the above requirements, then the USPTO will accept it and your trademark registration will remain live. In the event that it doesn’t meet all four requirements, then the USPTO will send you a post-registration office action outlining the reasons why the Renewal couldn’t be accepted (e.g. a trademark specimen refusal)
What Will Happen If I Don’t File By the Deadline?
Oftentimes, owners of trademark registrations neglect to file the Section 8 and 9 Renewal due to the substantial length of time between renewal periods. Sadly, if you fail to file the Renewal, the USPTO will cancel your trademark registration and all of the protections and benefits that come along with owning a federal registration will be lost. Of course, there wouldn’t necessarily be anything preventing you from filing a new trademark application to replace your canceled trademark registration, but you will be starting the entire registration process from scratch.
Need to File the Section 8 and 9 Renewal?
I’m experienced US trademark attorney Morris Turek. If it’s time to file the Section 8 and 9 Renewal but you’re maybe a little uncomfortable preparing and filing it yourself, please don’t hesitate to contact me right away for your free and confidential consultation. You can reach me by phone at (314) 749-4059, via email at firstname.lastname@example.org, or through my contact form located near the bottom of this page. I look forward to speaking with you soon.