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How to Renew a Trademark

Julian Gonzalez

Associate Patent Attorney
HOW TO RENEW A TRADEMARK

Once you have obtained a trademark registration from the United States Patent and Trademark Office (USPTO), you will need to ensure your trademark can be maintained. Ownership of your trademark can be maintained perpetually, as long as you continue to use the trademark and complete the necessary renewal formalities in a timely manner.

How to Renew a Trademark

Knowing the steps to renewing your trademark and carrying them out can be a vital component for your business. 

USPTO Trademark Renewal Requirements

The USPTO has specific requirements that must be met post registration to maintain your trademark. You must file specific documents with the USPTO within specific time frames to maintain and renew your trademark registration. If these documents are not filed prior to the applicable deadline, then your trademark will expire or will be canceled by the USPTO. 

Woman looking through stored files

Specifically, the USPTO requires that your trademark must either:

  1. Be continuously used in commerce in connection with the associated goods or services; or else
  2. Temporary nonuse of the trademark in commerce is excused due to special circumstances.

Specific Trademark Renewal Documents

Set out below are the specific documents the USPTO requires you to file in specific intervals post registration of your trademark.

  1. Declaration of Use and/or Excusable Nonuse under section 8 
    1. The section 8 declaration must be filed between the fifth and sixth year of your trademark’s registration. 
  2. Declaration of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9
    1. The section 8 declaration or section 9 declaration must be filed between the ninth and tenth year of your trademark’s registration. 
  3. Declarations of Use and/or Excusable Nonuse and an Application for Renewal under sections 8 and 9
    1. The section 8 declaration or section 9 declaration must be filed every tenth year until you no longer want to use this. 

Declaration Requirements

The section 8 declaration of use and section 9 declaration of use both have three separate components that must be filed with the USPTO:

  1. A declaration, i.e. a legal binding statement, listing the items in your trademark registration that you currently sell in commerce in the United States.
  2.  An image that depicts your trademark as it appears on the goods you sell or as it is used in connection with your services
  3.  Filing fees of $125 for each class of goods or services you filed your initial trademark under. 

Your declaration should clearly identify whether you want to remove any goods or services from those covered within your initial trademark registration. This means that if you no longer provide a good or service, you will want to make note of this within any section 8 declaration or section 9 declaration you submit to the USPTO. 

Person holding dollar bills

Optional Declarations

You also have the option to file additional declarations with your renewal declarations. 

First, you can file a Declaration of Incontestability if:

  1. Your trademark is registered on what is called the Principal Register;
  2. Your trademark has been used in commerce for 5 years. 

A Declaration of Incontestability enhances your legal rights to your trademark as it claims incontestability to your mark. 

Second, you can file a Section 7 Amendment or Correction of Registration. This can be filed if you have a non-material correction or amendment to your initial registration. This is the document you will want to file if you want to remove a good or service that is used with your trademark

Trademark Renewal Costs

When you submit the applicable declaration and associated documents with the USPTO, you will also need to pay specific renewal fees as well. The current renewal fee cost with the USPTO is $300. 

If you use an intellectual property attorney to assist you in this trademark renewal process, this will also increase your expenses for trademark renewal. It can be helpful to seek legal advice for your trademark renewal process, especially if you are considering removing some goods or services from your trademark registration.

Where to File Your Trademark Renewal

Your trademark renewals should be filed on the USPTO’s website database. Specifically, you will use the USPTO’s electronic filing system called 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 fees with a credit card. 

Trademark Renewal Filing Deadlines

You should make sure you are filing the applicable declarations and other documents in a timely fashion. If you miss a filing deadline, the USPTO will cancel your trademark. 

Renewal dates should be calculated from the date your trademark is issued rather than the date your 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. 

Client asking for advice on how to renew a trademark

Your priority date is determined from the date your application is filed. Make sure you don’t confuse these two dates when determining the applicable renewal filing deadlines. 

In general, it’s a good idea to file your renewal declarations early if possible to make sure you don’t run into any issues that could get your trademark canceled. You have a full year buffer to file your declaration renewals. 

For example, you can file your initial section 8 declaration any time between the fifth year anniversary of your trademark registration date and the sixth year anniversary of that date. 

What Happens if You Miss a Filing Deadline

If you miss a filing deadline for one of your trademark renewal filings, don’t panic. There are options if you miss your filing date. Specifically, there is a six month grace period following the date your trademark renewal declaration is supposed to be filed. If you file your declaration within this six month grace period, you will have to pay an additional fee. 

Once this six month grace period is up, your trademark registration will be canceled or deemed as a dead trademark

Renewing a Trademark in Other Countries

If you have also filed for trademark registration in other countries, you will need to file the applicable trademark renewal documents within those specific countries. Like in the United States, you will want to make sure these documents are filed in a timely manner. 

The Madrid Protocol is an international filing treaty between multiple countries related to filing trademark registration documents and their associated renewals. The Madrid Protocol streamlines your filing process and can help you as you seek to renew your trademark registration.  

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