Trademark Renewal Requirements and Deadlines

Maintaining a trademark registration requires periodic filings to keep the registration active and enforceable. Trademark maintenance ensures the trademark is still in use and the owner meets the necessary legal requirements.

The maintenance filing schedule for a U.S. trademark registration from its issuance date is as follows:

• 5th to 6th Year: File a Declaration of Use (Section 8) and optional Declaration of Incontestability (Section 15).

• 9th to 10th Year: File a Combined Declaration of Use and Application for Renewal (Sections 8 and 9).

• Every 10 Years Thereafter: File the Combined Declaration of Use and Application for Renewal (Sections 8 and 9).

For both Section 8 and Section 9 filings, the USPTO allows a 6-month grace period after the due date, during which the owner can submit the required documents with an additional late fee. The registration will be canceled if the filings are not made after this period.

Failure to submit the necessary Declaration of Use or Renewal Application within the required time frame will result in the cancellation of the trademark registration and the loss of its legal protections.

Declaration of Use (Section 8 Declaration)

In the U.S., a Declaration of Use (or Affidavit of Use) is required to prove that the trademark is still being used in commerce. The registrant must provide a specimen (example) of the mark in use and pay the appropriate fees.

The registration can be canceled if the mark is not in use and there is no valid reason for nonuse. If the trademark is not in use, the registrant can file a Declaration of Excusable Nonuse explaining why the trademark has not been used and a commitment to resume use.

Renewal Application (Section 9 Renewal)

The registration of a trademark must be renewed every ten years to ensure that the mark is still associated with the goods or services for which it was initially registered.

As shown above, the Renewal Application (Section 9) must be filed within the 9th to 10th year following the registration date and then every 10 years after that.

Combined Declaration of Use and Renewal (Sections 8 and 9)

This combined declaration consists of the following:

• Declaration of Use (Section 8): To show continued use of the trademark; and

• Renewal Application (Section 9): To renew the registration for another 10-year period.

This combined filing must be made between the 9th and 10th years from the issuance date and then every ten years thereafter.

Declaration of Incontestability (Section 15 Declaration)

After a trademark has been registered and in continuous use for five consecutive years, the owner may file a Declaration of Incontestability under Section 15. While this filing is optional, it is highly beneficial. It provides the trademark with incontestable status, making it more difficult for third parties to challenge the registration on specific grounds, such as descriptiveness.

As discussed above, the Section 15 Declaration is often filed together with the Section 8 Declaration at the 5-6 year mark.

Specimen of Use

A specimen of use must be submitted for each Declaration of Use filing (whether Section 8 or combined Section 8/9). This specimen is evidence showing that the mark is currently being used in commerce for the goods or services listed in the registration.

The specimen must reflect an actual use of the trademark in the marketplace. Examples include:

• For goods: Labels, packaging, or product photos showing the mark.

• For services: Website screenshots, brochures, or advertisements showing the mark in connection with the services.

The USPTO may reject the filing if the submitted specimen does not meet the requirements or accurately reflect the mark’s use in commerce. In such cases, failure to correct the issue can result in the cancellation of the registration.

How TCP Law Can Help

A TCP Law trademark attorney can help you maintain your trademark registrations.

For assistance with maintaining a trademark registration or with any trademark issue, please contact TCP Law at info@tcplawfirm.com or 917-612-1059.