A trademark registration with the U.S. Patent & Trademark Office can theoretically last forever. However, there are some things that you will need to do in order to maintain your registration. Most importantly, after registration you will need to continue using your trademark in connection with the goods and services listed in your registration. You also must make sure to file all of the necessary trademark renewal documents with the USPTO prior to any relevant deadlines. This post will explain when your trademark renewals are due. It will also explain the process of submitting these renewals.
Trademark Renewal Between Years 5 & 6
The Section 8 Declaration of Continued Use is the first trademark renewal you will need to file. Technically, this is not a “renewal,” but a requirement that you show your trademark is still being used. This first Section 8 filing must be made between five and six years from the date your trademark registered, not the date your application was initially filed.
The Section 8 filing requires that you provide a specimen showing your use of the mark. This is similar to the specimen you provided in your initial application, or a Statement of Use if you filed your application on an intent-to-use basis. If you do not properly file the Section 8 Declaration of Use in a timely fashion, you do have a six-month grace period. However, if you do not file by the end of the grace period, your registration will be cancelled.
The earliest that you can file this renewal is exactly five years from your registration date. So if the registration date for your trademark is October 1, 2024, then the earliest that you can file your trademark renewal is October 1, 2029. The last day that you could file your renewal (without penalty) would be October 1, 2030.
The Section 8 Declaration of Use can often be filed in conjunction with the Section 15 Declaration of Incontestability, assuming all of the requirements are met for making that filing. The Declaration of Incontestability gives the registration owner additional rights and protections. It also makes it more difficult for others to challenge the registration’s validity in federal court.
Trademark Renewal Between Years 9 & 10
If you have maintained your registration by filing the Section 8 between years five and six, your next trademark renewal is due between years nine and ten from the registration date. You will need to file another Section 8 Declaration of Use. But this time, you must also file a Section 9 Application for Renewal. The Trademark Office has an online form combining the two. Like before, you will need to provide a specimen demonstrating your use of the mark. If you miss the deadline, there is also a six-month grace period for this filing.
After Filing 10-Year Renewal
Once the 10-year renewal is filed, the next renewals will be due between the 19th and 20th years from registration. You would need to file another combined Section 8 and Section 9. These will include all of the same requirements as before. You would then repeat this process for your trademark renewal every ten years.
To summarize, the first trademark renewal is required between years five and six. Trademark renewals would then be required between years: 9 and 10, 19 and 20, 29 and 30, 39 and 40, 49 and 50, and so on…
Reminders for Trademark Renewal
Most trademark attorneys will have a system to remind them when your registrations come up for renewal. They can then let you know about the upcoming renewal, and assist you with it. However, it also is a good idea to have your own reminders in place. After all, you don’t know if between years 10 and 19 your attorney could retire or their practice could close. So it is always a good idea to have a backup reminder in place. The USPTO can now send email reminders about these renewals, too. But again, you should not rely solely on that to keep you updated.
As I mentioned before, there is a six-month grace period for each trademark renewal. However, the filing fee is much higher if you file during the grace period. You will save money by filing on time. The trademark renewal form must be completed correctly. Mistakes here can be costly. Once you have your registration, you may want the help of a professional trademark attorney in filing your renewals.
Is It Time To Renew Your Trademark Registration?
If you have a registration coming up for renewal, or need help determining when your next renewal filing is due, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
