In my earlier post about the different types of intellectual property, I mentioned that trademark registrations can last forever. However, there are some things that you need to do to maintain your trademark registration. You must continue to use your trademark in connection with the goods and services that are named in the registration. You must also file your trademark renewals on time. This post will explain when those renewals are due. It will also explain the process of submitting trademark renewals.
Trademark Renewal Between Years 5 & 6
The Section 8 Declaration of Use of Mark in Commerce is the first trademark renewal filing. You can complete the Section 8 Declaration using TEAS on the USPTO website. You will also need to pay the government filing fee. The Section 8 trademark renewal requires that you provide a specimen showing your use of the mark. This is similar to the specimen you will have provided in your initial application, or a Statement of Use if filed 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, which is discussed in greater detail below. However, if you do not renew by the end of the grace period, your registration will be cancelled.
You must file your first trademark renewal between five and six years after registration of your trademark with the U.S. Patent & Trademark Office. 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 April 24, 2012, then the earliest that you can file your trademark renewal is April 24, 2017. The last day that you could file your renewal (without penalty) would be April 24, 2018.
The Section 8 Declaration of Use is also typically filed in conjunction with the Section 15 Declaration of Incontestability. This additional filing gives the registration owner additional rights. It makes it more difficult for others to challenge the registration’s validity in federal court. Most people just file Sections 8 and 15 together. And there is a form for filing them simultaneously. Section 15 can really be filed at any time after the registration has been active for five years, though.
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. You will need to file another Section 8 Declaration of Use. But this time, you also must 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. You will also have to pay the government filing fee. And there is also the same grace period of six months.
From this point, the next trademark renewal filings 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. Then you would repeat this process for your trademark renewal every ten years. So to sum up, your 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 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, their practice could close, etc. So it is always a good idea to have a backup reminder in place. The USPTO now sends 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.
