In this article, we explain the process of renewing a trademark registered with the United States Patent & Trademark Office (USPTO), which is essential to maintain federal trademark rights. It covers the two essential forms: Declaration of Use under Section 8 and Application for Renewal of Registration under Section 9, as well as the timelines and deadlines for renewal, the consequences of missing a deadline, and the associated renewal fees, which includes government filing and potential attorney fees.
In some cases, a trademark owner may be unable to use their mark in commerce due to uncontrollable circumstances. This is referred to as excusable nonuse. Filing for excusable nonuse requires demonstrating to the Trademark Office the reasons for nonuse, which may include natural disasters, war, or other significant disruptions. This can help maintain your trademark protection despite periods of nonuse.
The trademark renewal process is fairly straightforward and relatively easy to navigate. Once you have conducted a trademark search and registered your trademark with the United States Patent & Trademark Office, you will be required to renew your trademark in order to maintain your federal trademark rights. Failure to renew your trademark will result in the cancellation of your federal trademark registration.
Trademark Renewal Forms
In order to avoid cancellation of your federal trademark rights, you will need to be familiar with two different renewal forms: the Declaration of Use under Section 8, and the Application for Renewal of Registration under Section 9. Let’s discuss each form in turn.
The Declaration of Use under Section 8 for Trademark Renewal
The Declaration of Use is a form in which you submit proof to the Trademark Office that you’re still actively using the trademark in commerce. The Trademark Office does not want to have a large number of registered trademarks that are not actually being used in commerce. The Declaration of Use is the Trademark Office’s way of getting rid of abandoned trademarks from the register.
In order to file the Declaration of Use, you will have to submit a specimen of use that shows that you’re still actually using your trademark in connection with the goods or services listed in the trademark registration. An appropriate specimen of use for a trademark that covers goods or products would be a picture of the product labels or packaging materials showing the mark on the labels or the packaging. If the trademark covers services instead, an appropriate specimen could be something like an advertisement or website that advertises or promotes the listed services.
In addition to the specimen of use, the Declaration of Use will also require the trademark owner to submit a written verified (signed) statement to the effect that the trademark is in use in commerce. Submitting a false or fraudulent declaration will void your federal trademark registration and any rights that come from it.
The Application for Renewal of Registration under Section 9
A second renewal form is required in order to maintain one’s federal trademark rights using the Application for Renewal of Registration under Section 9. This form is basically a formal written request to the Trademark Office that the registration be renewed for the goods or services identified therein for a period of 10 years. Timely renewal of your trademark is crucial to ensure ongoing protection. When filing the Application for Renewal, a Section 8 Declaration of Use must also accompany it.
Trademark Renewal Deadlines
Now that we know which forms to use, we need to know precisely when to use those forms. After all, missing a renewal deadline could very well result in the cancellation of your trademark registration. Luckily, the deadlines are pretty straightforward and don’t require a trademark renewal calculator.
First filing deadline: A Declaration of Use under Section 8 form must be filed between the fifth and sixth years after the registration date. If you miss this deadline, you can also file up to six months after the deadline during the grace period for an additional government filing fee of $100 per class.
Second filing deadline: You must file a Declaration of Use under Section 8 and an Application for Renewal of Registration under Section 9 between the ninth and tenth years after the registration date. Once again, if you miss this deadline, you can file up to six months after the deadline during the grace period for additional fees.
Requirements in Successive Ten-Year Periods: You must file a Declaration of Use under Section 8 and an Application for Renewal of Registration under Section 9 between every ninth and tenth-year period after the registration date. If you fail to file the required form every 10 years, then your trademark registration will be subject to cancellation.
To give an example of the filing deadlines in action, let’s assume that your registration date is on August 30, 2023. Accordingly, the trademark renewal timeline in this example would be as follows:
August 30, 2029: This would be the first filing deadline, in which you would need to file a Declaration of Use under Section 8. You can file as early as August 30, 2028 (the beginning of the fifth year after the registration date), and as late as August 30, 2029 (the beginning of the sixth year after the registration date) without incurring extra late fees. If necessary, you can file as late as September 30, 2021,, by paying an extra late fee during the grace period.
August 30, 2033: This would be the second filing deadline, in which you would need to file a Declaration of Use under Section 8 and an Application for Renewal of Registration under Section 9. You can file as early as August 30, 2032 (the beginning of the ninth year after the registration date), and as late as August 30, 2033 (the beginning of the tenth year after the registration date) without incurring extra late fees. If necessary, you can file as late as March 3, 2034, by paying an extra late fee during the grace period.
And so on every ten years thereafter.
Trademark Renewal Fees
How much does it cost to renew a trademark?
The fees will vary depending on what is being filed, and when.
For the Declaration of Continued Use due between the fifth and sixth years after the registration date, the government filing fee is $100 per class of goods/services. Of course, this does not include any attorney fees that a trademark attorney may charge you to prepare and file the Declaration for you. It is typical to expect an attorney to charge anywhere from $250 up to $750 to prepare and file the Declaration of Use for you.
If you’re filing a Combined Declaration of Use and Application for Renewal of Registration of a Mark under Sections 8 & 9 between the ninth and tenth years after the registration date (or between the 19th and 20th years, or between the 29th and 30th years, etc.), then the government filing fee will be $400 per class of goods/services. If you were to hire a trademark lawyer to prepare and file the documents for you, you can expect to pay anywhere from $350 to $1,050 on average for the attorney fees.
These renewal fees may seem expensive at first glance. However, it’s important to keep in mind that you only have to renew your trademark registration once every 10 years. Although you also have to file a Declaration of Use between the fifth and sixth years after the registration date, the fees for that particular filing are relatively inexpensive (i.e., only $100 per class of goods/services, plus any attorney fees).
In conclusion, the trademark renewal process should be easy. The most difficult part for clients is simply keeping track of the deadlines. A trademark renewal service offered by law firms like ours can make the process even easier.
Legal Advice and Trademark Filings
Navigating the intricacies of trademark renewals and filings can be complex. Seeking legal advice from a qualified trademark attorney can help ensure that all necessary documents are filed correctly and on time. A trademark attorney can assist with filing your renewal application, understanding the six-month grace period, and handling any issues that arise during the renewal process. Using a professional service can also help your company stay on top of deadlines and avoid costly mistakes.
International Trademark Registration Businesses with international reach may need to consider international trademark registration. Different countries have their own trademark laws and renewal processes. It is advisable to consult with a trademark attorney to ensure your marks are protected globally and understand the intervals and requirements for renewal in each jurisdiction.
Payment and Fees
Trademark renewal involves both government fees and potential attorney fees. Ensuring timely payment is crucial to avoid additional costs and the risk of cancellation. For businesses, managing these payments efficiently is part of maintaining their intellectual property protections.
FAQs
What are the key forms required for the trademark renewal process?
The two essential forms required for the trademark renewal process are the Declaration of Use under Section 8 and the Application for Renewal of Registration under Section 9. These forms serve as proof of the ongoing use of the trademark and a formal request for renewal respectively.
What is a specimen of use in the context of the Declaration of Use form?
A specimen of use refers to tangible proof that demonstrates you’re still using your trademark in connection with the goods or services listed in your trademark registration. For a trademark covering goods or products, it could be a picture of the product labels or packaging showing the mark. If the trademark is for services, a specimen could be an advertisement or website that promotes the listed services.
What are the filing deadlines for trademark renewal?
The first filing deadline requires submitting a Declaration of Use under Section 8 between the fifth and sixth years after the registration date. The second deadline involves filing a Declaration of Use under Section 8 and an Application for Renewal of Registration under Section 9 between the ninth and tenth years after the registration date. After that, the same combination of documents needs to be filed every ten years.
What happens if I miss the deadline for trademark renewal?
If you miss the deadline for trademark renewal, you can still file up to six months after the deadline during the grace period, but you’ll need to pay an additional government filing fee. If you fail to file the required form after this period, your trademark registration is subject to cancellation.
How much does it cost to renew a trademark?
The government filing fee for the Declaration of Continued Use due between the fifth and sixth years after the registration date is $100 per class of goods/services. The filing fee for a Combined Declaration of Use and Application for Renewal of Registration of a Mark under Sections 8 & 9 is $400 per class. These fees do not include any potential attorney fees, which could range from $250 to $1050 depending on the complexity of the case and the attorney’s rates.
Contact us
If you need assistance with your trademark renewal or have questions about maintaining your trademark rights, please contact us by using our form. Our team of experienced trademark attorneys is here to provide the support and legal advice you need to protect your brand.
