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 the 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 on 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 that is required in order to maintain one’s federal trademark rights is 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.
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 March 30, 2015. Accordingly, the trademark renewal timeline in this example would be as follows:
March 30, 2021
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- : 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 March 30, 2020 (the beginning of the fifth year after the registration date), and as late as March 30, 2021 (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.
March 30, 2025: 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 March 30, 2024 (the beginning of the ninth year after the registration date), and as late as March 30, 2025 (the beginning of the tenth year after the registration date) without incurring extra late fees. If necessary, you can file as late as September 30, 2025 by paying an extra late fee during the grace period.
March 30, 2035: This would be the third 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 March 30, 2034 (the beginning of the 19th year after the registration date), and as late as March 30, 2035 (the beginning of the 20th year after the registration date) without incurring extra late fees. If necessary, you can file as late as September 30, 2035 by paying an extra late fee during the grace period.
March 30, 2045: This would be the fourth 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 March 30, 2044 (the beginning of the 29th year after the registration date), and as late as March 30, 2045 (the beginning of the 30th year after the registration date) without incurring extra late fees. If necessary, you can file as late as September 30, 2045 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.
