Trademark registrations must be renewed every ten years at the end of every successive 10-year period following the trademark registration date. Registrations not renewed on time are revoked.
While a Section 8 Declaration is necessary to manage the registration between its fifth and sixth year, actual trademark registration renewal needs to be done every 10th anniversary. A renewal application is required under Section 9 of the U.S. Trademark Act, and every renewal application should go with a Section 8 declaration.
As the owner of a registered trademark, you must file certain documents at regular intervals to renew and maintain your registration; this is known as "trademark renewal." The USPTO will revoke your trademark if you don't file the documents before deadline.
You must file the renewal application within one year before the registration expires (every ten years). There's a grace period of six months for filing an application for renewal for an extra fee. Presently, if you file it online, the additional cost is $100 per class.
It's similar to a Section 8 declaration but includes the request for renewal of the trademark and the necessity to pay the USPTO trademark renewal fee.
You must file a section 8 declaration between the fifth and sixth anniversaries of the registration date (or within the six-month grace period following the end of the sixth year). It's also known as registration maintenance.
Subsequent section 8 declarations are also needed for the renewal of the registration. You must file them between the ninth and tenth anniversaries of the registration date. After that, you will have to file it in each successive 10-year period (or within the grace period of six months following the conclusion of the ten years).
The goal of a section 8 declaration is to remove trademarks from the Register that are no longer used in business.
Requirements for the Section 8 declaration include:
Specifying that the mark is presently in use in business or connected with the services and goods recognized in the registration.
Submitting a sample of use for every class in the registration.
Paying the necessary fee.
Submitting the statement, verified and signed by a person appropriately authorized to sign on the owner's behalf, attesting to the mark's excusable non-use or use.
The present fee for filing a section 8 declaration is $125 for each class. If you file the declaration within the six-month grace period, there is an extra fee of $100 for each category. You must file the section 8 declaration electronically via TEAS (Trademark Electronic Application System), USPTO's online filing system.
The trademark owner should file the section 8 declaration. The assignment must be recorded with the USPTO's assignment branch if the registration has been allocated.
Section 15 of the trademark act permits the registered trademark owner to claim "incontestability" of the mark that has been continuously used for five years after the registration date.
If the registration is "incontestable," the registration is conclusive proof (subject to particularly statutory defenses) of:
The exclusive right of the registrant to use the registered mark in business
The registered mark's validity and its registration
The registrant's ownership of the trademark
In other words, the exclusive right to utilize a registered mark in business on or in connection with the registered goods and services becomes incontestable.
Every ten years, you should submit a merged declaration of excusable non-use or use and application for trademark renewal timeline under combined filing of Sections 8 and 9. The USPTO forms merge the section 8 declaration with the section 9 application for renewal. A section 9 application for renewal is a request which is written to keep your active registration.
You need to comprise the following details in a combined filing of Section 8 and 9:
The address and name of the present owner
The registration number
The filing fee for each class of services or goods in the registration
If the trademark is still in use:
A statement specifying that the trademark is in use in business
A list of the services or goods in association with which you use the trademark
Examples of approved specimens such as labels and tags attached to advertisements and goods for services
If the trademark isn't applied:
A list of the services or goods with which the trademark is not in use in business
The date of the final use of the trademark in business
The approximate date when would you resume its use in business
Details relating to the cause for non-use
Particular steps are taken to carry on with the use
A signed written request for trademark renewal that proves the correctness of the data provided
If you are filing a declaration of use after five years, it's $225 for each class (if filed before the grace period). Filing a Declaration of Use after five years merged with a Declaration of Incontestability is $425 for each class (if filed before the grace period). Filing a Declaration of Use and a renewal application after every ten years is $525 for each class. Filing an Incontestability Declaration (Section 15 declaration) is $200 for each class.
The benefits and protections of a registered U.S. trademark come with a series of ownership responsibilities. One of your very crucial duties is managing and renewing the trademark at the intervals set by the USPTO (United States Patent & Trademark Office). If you miss the renewal deadline, the USPTO will revoke your trademark registration without any notice.
Stay up to date on the renewal process and provide the necessary documents with Trademark Engine. Our team will help you navigate through all deadlines and documents.
Trademark Engine is not a law firm and none of the information on this website constitutes or is intended to convey legal advice. General information about the law is not the same as advice about the application of the law in a particular factual or legal situation. Individual facts and circumstances as well as legal principles including but not limited to the ones referenced on this website can affect the outcome of any given situation. Trademark Engine cannot and does not guarantee that an application will be approved by the USPTO, that a mark will be protected from infringement under common US trademark law, or that any ensuing litigation or dispute will lead to a favorable outcome. If you want or have an interest in obtaining legal advice with respect to a specific situation or set of circumstances, you should consult with the lawyer of your choice.