After they have gone through the trademark process and possess a registered trademark, the most common question clients ask is, “How long does a trademark last?”
The simple answer: Your trademark will initially last for six years, but you can maintain the registration forever with a bit of maintenance. (Source: USPTO)
The United States Patent and Trademark Office (USPTO) imposes many requirements on registered trademark holders if they wish to retain their rights. Failure to abide by these requirements could mean cancellation of a registration and total loss of trademark protection. That’s the bad news.
The good news is that if you follow the USPTO’s instructions, you won’t have to worry about them canceling your trademark. You can enjoy all intellectual property protections granted by federal trademark registration under the law, as long as you perform the necessary maintenance and remain the trademark owner.
For those unfamiliar with the specifics of post-registration maintenance, seeking legal advice from a qualified trademark attorney is highly recommended. An attorney can provide guidance on how to properly manage your trademark portfolio, ensuring that all necessary documents are filed accurately and on time.
The Section 8 Declaration
The technical answer to the question of how long your trademark lasts is six years. After six years the USPTO can cancel your trademark if you haven’t filed the appropriate paperwork.
Between the fifth and sixth anniversaries of your trademark registration date, you are required to file a Section 8 Declaration. The Section 8 Declaration informs the USPTO that you are still using your trademark in commerce.
In cases of infringement, it’s crucial to have your trademark registration in good standing to take legal action. A valid registered trademark serves as a powerful tool in infringement disputes, both within the United States and in foreign countries where your trademark may be registered.
The USPTO does not want to have trademarks on the Trademark Register that are not actually being used. The Section 8 Declaration provides proof that you are still using your trademark (or excusable nonuse). Since businesses that have gone out of business or have abandoned their marks typically will not file the Section 8 Declaration, the USPTO can cancel the registrations for failure to file.
The timing of the filing of the Section 8 Declaration is important. You cannot file the Section 8 Declaration before the five-year anniversary of your registration date, and you cannot file it after the six-year anniversary (although there is a 6-month grace period for late filings with additional fees).
For example, if your trademark was registered on July 1, 2019, then you would have to file the Section 8 Declaration sometime on or after July 1, 2024, and on or before July 1, 2025. (It’s worth noting – the date you filed the trademark application doesn’t matter here, just the date of the official registration.)
Combined Section 8 Declaration and Section 9 Application for Renewal
The Section 8 Declaration is not the only required trademark renewal form. It will hold your trademark rights for another few years, but after that, you will have to renew your rights yet again.
After the ninth anniversary but before the 10th anniversary of your trademark registration date, you are required to file a Combined Section 8 Declaration and Section 9 Application for Renewal. Once again, the USPTO wants to ensure that you have not abandoned the trademark and are still using it in commerce.
The above example company, which registered on July 1, 2019, would have to file its Combined Section 8 and Section 9 on or after July 1, 2028, and on or before July 1, 2029. This isn’t the last time that you’ll have to file this very form.
You need to file another Combined Section 8 and Section 9 filing every 10 years. That is, you’ll need to file one between your 19th and 20th-anniversary dates, and then again between your 29th and 30th anniversaries, and so on until you cease using the mark.
As long as you keep filing the renewals every 10 years after the registration date, you should be able to make your trademark last forever (or until you stop using it).
It’s essential to understand that the requirement for renewal is not unique to the United States. Many countries have similar requirements for maintaining a registered trademark, emphasizing the importance of being aware of international post-registration maintenance obligations if your trademark is registered in multiple jurisdictions.
