Missing a trademark renewal deadline can result in losing legal protection for your brand. We’ve filed and renewed countless trademarks over the years. With this experience, we’re going to explain how to renew a trademark to maintain your trademark rights and avoid risking costly legal battles over trademarks.
How to Renew a Trademark: Trademark Renewal Timeline, Process, and Costs
To renew a trademark, you must file a declaration of continued use with the United States Patent and Trademark Office (USPTO) between the fifth and sixth year after registration, and then submit an application for trademark renewal at regular intervals every ten years after registration. On the USPTO website, you can submit the required data forms and images and pay the necessary fees.
Do you need a new registration from the USPTO? You can be a perpetual trademark owner, as long as you continue to use the registered trademark and complete the necessary renewal formalities promptly with the assistance of our law firm.
1. Check the Trademark Renewal Timeline and Deadlines
Trademark renewal timeline and dates should be calculated from the date your trademark is issued rather than the date your USPTO trademark application was submitted. Notably, this is different from what is called your priority date, which is the date your legal rights to the trademark kick in. When a trademark is first registered with the USPTO, it is valid for an initial term of ten years from the date of registration.
After the initial 10-year term, the registration can be renewed indefinitely every 10 years by filing the combined Section 8 and 9 documents.
If possible, it’s a good idea to seek the help of a lawyer in filing your renewal declarations early. Set out below are the specific maintenance documents the USPTO requires in specific intervals post-registration.
Section 8 Declaration
Declaration of Use and/or Excusable Nonuse under Section 8 must be filed after five or six years of your trademark’s registration.
Renewal Under Combined Section 8-9
Within the year before the end of every 10-year period after the registration date, the Declaration of Use and/or Excusable Nonuse and an Application for Renewal under Sections 8 and 9 of the Lanham Act must be filed between the ninth and tenth year of your trademark’s registration.
Declarations of Use and/or Excusable Nonuse and an Application for Renewal under Sections 8 and 9 must be filed every tenth year until you no longer want to use this.
The Section 9 filing (15 U.S.C. § 1059) is the formal application for renewal, while the Section 8 filing (15 U.S.C. § 1058).
Section 15 for Trademark Incontestability
While the USPTO mandates that you file a Section 8 Declaration for filing a renewal, it’s optional to file a Section 15 of the Lanham Act to make the trademark incontestable, which requires:
- Registration on the Principal Register
- Continuous use in commerce for at least five years
- No adverse or pending legal proceedings involving the trademark
A Declaration of Incontestability enhances your legal rights to trademarks as it claims incontestability to your mark. Second, you can file a Section 7 Amendment or Correction of Registration.
Renewal Cancellation Period
Trademark cancellation can occur before the 10-year renewal deadline if someone files a Petition to Cancel claiming non-use for 3 consecutive years.
When a Petition to Cancel is filed, you’ll have 40 days to respond to the Trademark Trial and Appeal Board (TTAB), followed by a discovery phase and trial briefs/evidence presentation. Trademark cancellations are often filed, so continued use of the trademark is important to avoid cancellation.
Grace Periods
Don’t panic if you miss a filing deadline for one of your trademark renewal filings. There is a six-month grace period following the date your trademark renewal declaration is supposed to be filed.
You will have to pay an additional fee if you file your declaration within this six-month grace period. Once this six-month grace period for the trademark renewal is up, your registration will be canceled or deemed as a dead trademark.
2. Prepare the Necessary USPTO Trademark Renewal Requirements
The USPTO requires maintenance documents post-registration. You must file specific documents with the USPTO within specific timeframes to renew your trademark registration.
A trademark lawyer can file these renewal documents within the deadlines to keep registrations alive.
- Section 8 Declaration of Use and/or Excusable Nonuse between the fifth and sixth year after the registration date.
- First Declaration of Use and/or Excusable Nonuse and an Application for Renewal under combined Section 8-9 between nine and ten years after the registration date.
- Subsequent Declarations of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9 every ten years.
The USPTO also requires that trademarks must either:
- Be continuously used in commerce in connection with the associated goods or services.
- Temporary nonuse of trademarks in commerce is excused due to special circumstances.
When these maintenance documents are not filed before the applicable deadline, then your trademark will expire or will be canceled.
3. File the Declaration of Use
To achieve regular maintenance of trademarks, you or your lawyer must file a Declaration of Use to meet the requirements for trademark renewal. Trademark attorneys can make sure you’re following requirements by filing certain documents on time.
Declaration Requirements
The Section 8 Declaration and Section 9 Declaration both have components that must be filed with the United States Patent and Trademark Office:
- Address and name of the present trademark owner
- Registration number
- A legally binding statement, listing the items in your trademark registration that you currently sell in commerce in the United States
- An image that depicts trademarks as it appears on the goods you sell or as it is used in connection with services
When you no longer provide a good or service, you will want to make note of this when you file a Section 8 Declaration or Section 9 Declaration you submit to the USPTO.
Renewing a Trademark in Other Countries
When you have also filed for trademark registration in other countries, there’s also a need to file the applicable trademark renewal documents within those specific countries. The Madrid Protocol is an international filing treaty between multiple countries related to filing documents and their associated renewals.
4. Submit a Renewal Application
Your trademark renewals should be filed on the USPTO website database or the USPTO’s Trademark Electronic Application System (TEAS).
This will require you to create an account through the system. From there, you can upload your declaration and associated image, and pay the applicable filing fee for phrases, brands, logos and symbols trademarks with a credit card.
5. Pay the USPTO Trademark Renewal Fees
When you submit the applicable declaration and associated documents with the USPTO, you must pay specific renewal fees to renew your trademark.
| Classification | Fees |
| Option 1: TEAS Plus | $250 per class of goods/services |
| Option 2: TEAS Standard | $350 per class of goods/services |
| Section 8 Declaration | $225 per class |
| Section 8 Declaration combined with Section 15 Incontestability | $425 per class |
| Combined declaration of Sections 8 and 9 | $525 per |
| Section 15 declaration | $200 per class |
Note that renewals submitted during the six-month grace period have additional fees of $100 per class.
With an intellectual property attorney to assist you in this trademark renewal process, the costs will also increase your expenses for trademark renewal. However, it can be helpful to seek legal advice for your trademark renewal process.
6. Address Any Office Action and Wait for Confirmation
Our law firm can assist with the timely submission of documents for registration maintenance. Within the next month or two, you can typically expect a Notice of Acceptance, Notice of Renewal, and/or Notice of Acknowledgement.
Should issues arise, we have six months to address an Office Action. However, a grace period may extend the process. Proper handling of these matters can help avoid complications with the Trademark Trial and Appeal Board.
Related Questions
How Much Does It Cost to Renew a Trademark in the USA?
The cost to renew trademark registrations depends on the class of goods or services. For example, a Section 8 Declaration costs $225, Section 15 requires $200, and an extra fee of $100 applies to the grace period. These fees are necessary to avoid cancellation of the entire registration of your trademark.
What Happens if a Trademark Expires?
Once a trademark expires, it may become available for others to use or register, potentially damaging your brand’s trademark protection. When you fail to renew your trademark, you’ll lose your federal trademark rights, requiring you to file for reinstatement or seek new registrations.
How Can a Trademark Attorney Help in Renewing Trademarks?
Trademarks are renewed by filing the appropriate forms and fees with the USPTO before specified deadlines. It’s often advisable to work with a trademark attorney or use the USPTO website to make sure the required documents are submitted correctly and on time to meet USPTO deadlines.
Conclusion
Submitting a timely renewal application can maintain your registration and protect your brand’s valuable intellectual property rights. As our trademark attorneys help you in the trademark renewal process, you can achieve continued use of your mark, prevent potential legal disputes, and preserve the brand registration associated with your business or products.
