Understanding the trademark registration renewal periods is crucial to avoiding inadvertent cancellation of your trademark registration by the United States Patent and Trademark Office (USPTO). Although a trademark itself can theoretically last forever so long as it’s being used in commerce in connection with the advertising and sale of products or services, a US trademark registration must be maintained and renewed periodically in order keep it in full force and effect. The good news is that renewing a trademark registration and preventing it from becoming a canceled trademark registration isn’t a very difficult or time-consuming thing to do. The bad news is that you actually have to remember to meet and comply with the trademark renewal deadlines. Thankfully, the USPTO will generally send a renewal reminder to the owner of the registration if the owner provided its email address to the USPTO in a previous filing.
First Trademark Registration Renewal Period
So, when are the trademark registration renewal periods? If your trademark is registered under Section 1(a) (use in commerce) or Section 44(e) (U.S. registration based on a foreign trademark registration), then you must file the Section 8 Declaration of Use between the 5th and 6th year of registration. So, if the registration date of your trademark is February 19, 2021, then you must file the Section 8 Declaration of Use between February 19, 2026 and February 19, 2027.
The Section 8 Declaration of Use form is located on the USPTO website and should be completed and filed electronically through TEAS. In addition to paying the filing fee, you must provide (1) a sworn statement that the trademark is still in use in commerce, and (2) one current specimen per class showing actual use of the trademark in connection with at least one of the products/services listed in each class (unless you’re claiming excusable nonuse). If you fail to timely file the Section 8 Declaration of Use by the 6th year of registration, your trademark registration will be canceled and you’ll lose all of the benefits and protections of federal registration. Having said that, there’s a six-month “grace period” in which you can still file the Section 8, but the cost of filing it increases quite substantially. So, in the example I gave earlier, the grace period would run from February 20, 2027 through August 19, 2027.
If your trademark is registered with the USPTO through the Madrid Protocol (officially known as a “registered extension of protection”), then you must file the Section 71 Declaration of Use rather than the Section 8 Declaration of Use. The requirements and fees are essentially identical.
Second Trademark Registration Renewal Period
If you remembered to file the Section 8 Declaration of Use, the next step for a trademark not registered through the Madrid Protocol is to file a trademark registration renewal between the 9th and 10th year of registration. This requires that you file both a Section 8 Declaration of Use and a Section 9 Application for Renewal (which are provided by the USPTO as a combined form known as the Section 8 and 9 Renewal). So, if your trademark was registered on February 19, 2021, the Section 8 and 9 Renewal would be due between February 19, 2030 and February 19, 2031 (with a six-month grace period running through August 19, 2031).
The Section 8 and 9 Renewal form can be found on the USPTO website and should be filled out and submitted electronically through TEAS. In addition to the filing fee, you must also include at least one specimen per class showing actual use of the trademark as you did when you filed the Section 8 Declaration of Use between the 5th and 6th year of registration (unless you’re claiming excusable nonuse). In the unfortunate event that you forget to file the Section 8 and 9 trademark renewal document by the 10th year of registration, the USPTO will cancel your registration unless you file the Section 8 and 9 within the six-month grace period and pay the increased filing fees.
If your trademark is registered with the USPTO through the Madrid Protocol as a registered extension of protection, then you must file another Section 71 Declaration of Use instead of the Section 8 and 9 Renewal.
Subsequent Renewal Periods
Assuming you timely filed all of the proper documents during the first ten years of registration, you’re not required to submit any other trademark registration renewal documents to keep your registration active until between the 19th and 20th year of registration. For a trademark not registered through the Madrid Protocol, you’ll need to file another Section 8 and 9 Renewal to maintain and renew your trademark registration. Your registration will then have to be renewed again between the 29th and 30th year of registration, between the 39th and 40th year of registration, between the 49th and 50th year of registration, and so on. If you miss the deadline for any renewal period, and you don’t file the Section 8 and 9 Renewal within the six-month grace period following the expiration of the renewal period, your registration will be canceled.
For a trademark registered in the USPTO through the Madrid Protocol as a registered extension of protection, another Section 71 Declaration of Use needs to be filed during these time periods rather than the Section 8 and 9 Renewal.
Accuracy is Key
Finally, it’s absolutely essential that all of these trademark registration renewal documents are prepared correctly with only 100% accurate and truthful information. The validity of your trademark registration could be jeopardized by mistakes or errors you may inadvertently make in the completion of the required forms. If your trademark renewal document doesn’t satisfy all legal requirements, or if the USPTO suspects that you’ve supplied inaccurate or false information, then the USPTO will send you a post-registration office action explaining why the renewal document couldn’t be accepted (e.g. a trademark specimen refusal). If you don’t file a response to the post-registration office action by the deadline, the USPTO will cancel your registration.
Let Me Help With Trademark Registration Renewal
I’m experienced US trademark attorney Morris Turek. If you have any questions about how to keep your trademark registration from being canceled, or need the assistance of a reliable trademark attorney to prepare and submit the proper trademark registration renewal and maintenance documents on your behalf, please don’t hesitate to give me a call at (314) 749-4059, send me a message (firstname.lastname@example.org), or use my contact form (below). I look forward to hearing from you soon.