What is Trademark Renewal and Why is it Needed?
After a federal trademark has been accepted for registration it is important to monitor the trademark renewal deadlines in order to keep the mark or brand active. The first important deadline to renew your registration is between the 5th and 6th year after your trademark registration date.
Maintain Your Active Trademark Registration
This article considers everything you need to know about trademark renewal filings to maintain your active registered trademark. If the U.S. Patent and Trademark Office (USPTO) has granted federal registration for your trademark, logo or slogan, congratulations! You can now breathe a little easier knowing you’ve taken an important affirmative step in protecting your brand name and claiming exclusive ownership rights in your trademark for your particular goods or services.
Important Trademark Renewal Deadlines
Applying for and obtaining federal trademark registration is not the end of the line in protecting your brand name. Besides proactively monitoring your trademark and warding off any potentially infringing use of your mark by others, you must mark your calendar for some important trademark renewal deadlines. In order to maintain active registration status at the USPTO, there are several trademark renewal filings due over the life of your trademark that must be filed in a timely manner to avoid cancellation of your registration. A federally registered trademark is valid for ten (10) years following the date of registration. Your trademark may be renewed indefinitely – allowing long term rights that strengthen even more over time – but you must file the following renewal Affidavits and Declarations to ensure the continued validity of your trademark registration.
Your First Trademark Renewal Date
Your first trademark renewal is due between the 5th and 6th year following your trademark registration date. This is a Section 8 Declaration of Use or Excusable Non-Use. Perhaps because most businesses go out of operation within the first five (5) years, the USPTO would like to know that you are still using your registered trademark name and would like to maintain active registration status. Failure to file a timely Section 8 Declaration will result in cancellation of your trademark registration.
For trademark owners interested in taking the affirmative step of seeking incontestability for their registered trademark, the USPTO offers you the option of also filing a Section 15 Declaration of Incontestability if you have continuously used a mark registered on the Principal Register (not the Supplemental Register) in commerce for at least 5 years following registration. The USPTO provides a combined Declaration of Use and Incontestability Under Sections 8 & 15 Form, for owners to submit both at once.
Note that while a Section 8 Declaration of Use is required to maintain active trademark registration, Section 15 is entirely optional and the USPTO will not cancel your registration for failure to file a Section 15 Declaration. If the USPTO accepts your Section 8 Declaration of Use or combined Declaration of Use and Incontestability, your trademark registration will remain valid for the remainder of the initial ten-year term.
Your 2nd Trademark Renewal Filing Date
Your next trademark renewal filing is due between the 9th and 10th year following your registration date.
At that time, you must file a combined Section 8 Declaration of Use, and a Section 9 Application for Renewal. Failure to file a timely Declaration of Use and Application for Trademark Renewal will result in cancellation of your trademark registration at the USPTO. If you comply with the above renewal filing requirements, your registration will be valid for another ten-year period, with renewal filings thereafter due only between the 9th and 10th year for all successive ten-year periods.
Trademark Renewal Grace Period
All trademark renewal filings include a 6-month grace period, subject to extra filing fees, during which you may file the required documents to maintain active registration status. Failure to file timely renewals will result in cancellation of your trademark registration and the USPTO will not inform you of upcoming trademark renewal deadlines! Once your trademark is registered, make a note of your registration date and mark your calendar 5-6 years out so you don’t miss these all-important deadlines. It is ultimately your responsibility to keep an eye on the deadlines and file timely trademark renewal documents.
Helping Businesses Protect Their Brands
The trademark attorneys at FlatFee Trademark have over 20 years of combined experience in helping entrepreneurs and business owners protect their trademarks and brand names. Our attorneys can assist with preparing and filing the necessary Section 8 and Section 15 Declarations and Section 9 Applications for Trademark Renewal to maintain your active trademark registration. Contact us today for a complimentary consultation regarding your trademark renewal requirements, (800) 769-7790.