Although a trademark 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 United States trademark registration must be maintained and renewed periodically in order keep it in full force and effect. The good news is that preventing your trademark registration from lapsing is not a very difficult or time-consuming thing to do. The bad news is that you have to actually remember to meet the trademark registration renewal deadlines.
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. The form is provided by the United States Patent and Trademark Office (USPTO) online and may be completed and submitted electronically. In addition to paying the filing fee, you must provide a sworn statement that the trademark is still in use in commerce and include a specimen showing actual use of the trademark (unless you’re claiming excusable nonuse). If you fail to timely file the Section 8 Declaration of Use by the sixth 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.
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 ninth and tenth year of registration. This requires that you file and pay for 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). You must also include a current specimen showing actual use of the trademark as you did when you filed the Section 8 Declaration of Use between the fifth and sixth year of registration (unless you’re claiming excusable nonuse). In the unfortunate event that you forget to file these trademark registration renewal documents by the tenth year of registration, the USPTO will cancel your registration unless you file the required documents within the six month grace period and pay the increased filing fee.
If your trademark is registered with the USPTO through the Madrid Protocol, 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 the 19th year of registration. For a trademark not registered through the Madrid Protocol, you will need to file another Section 8 Declaration of Use and Section 9 Application for Renewal in order to keep your trademark registration alive. If these documents aren’t filed by the 20th year of registration (or within the six month grace period), your registration will be canceled. Your trademark registration will then have to be renewed again between the 29th and 30th year of registration, the 39th and 40th year of registration, and so on.
For a trademark registered in the United States through the Madrid Protocol, another Section 71 Declaration of Use needs to be filed rather than the Section 8 and 9 Renewal.
Accuracy is Key
Finally, it’s absolutely essential that all of these trademark registration renewal documents be prepared correctly so as to ensure that the validity of your trademark registration isn’t jeopardized by mistakes or errors you may inadvertently make in the completion of the required forms. If your trademark registration renewal document does not satisfy all legal requirements, then the USPTO will send you a post-registration office action explaining why it could not be accepted.
Complying with Trademark Registration Renewal Deadlines
I’m 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 an experienced trademark attorney to prepare and submit the proper trademark registration renewal documents, please do not hesitate to give me a call at (314) 749-4059, send me a message (firstname.lastname@example.org), or use my contact form. I look forward to hearing from you soon.