Registering a trademark with the U.S. Patent and Trademark Office (USPTO) is a relatively simple process. After the USPTO approves your trademark, however, you still need to protect and police your mark.
One important aspect of protecting your mark is the requirement that you renew your trademark periodically for as long as you plan to use it.
You need to prove consistent use of your mark, else the USPTO will list your trademark as inactive or abandoned. As a result, other businesses in the same industry can use and even register the same mark without any negative consequences.
To avoid this fate, you should renew and update your trademark every 5-10 years after registering it. Doing so can protect your business in the long run, and is actually quite simple to do.
In this article, we’ll go over the renewal process step by step, as well as give an overview of the forms required for protecting your mark.
What’s the Timeline?
When thinking about trademark renewal, there are three specific dates you should keep in mind. These three dates make up the initial timeline for your first decade of trademark ownership. These dates are:
- Your official registration date (listed on the USPTO website).
- A date between the 5th and 6th anniversary of your official registration.
- A date between the 9th and 10th anniversary of your official registration.
After your official registration, the renewal clock starts running at the USPTO office. If you fail to show use of your trademark within the first 6 years after this date, you’ll lose ownership of the mark. Further, you must also file for trademark renewal by the 10th anniversary of your trademark’s original registration date.
After the this final date, you simply have to renew your trademark every 10 years and show that you’re actively using it (based again on your official registration date). As an added convenience, you can file all your forms online on the USPTO’s website.
As you can see from the bullets above, the USPTO bases their entire timeline on the original date you registered your mark. This is important, because renewal deadlines are considered from the date the USPTO officially issued you your trademark. This is not the date you originally filed, nor the date when your application was published in the Trademark Official Gazette.
If you’re unsure about this specific date, you can find your mark on the USPTO’s website. Specifically, you’ll use the Trademark Electronic Search System (TESS) to find your mark. Then, you simply have to browse your listing for the line that says “Registration Date.”
You should note that the USPTO will not send you a reminder when it’s time to renew your trademark. You must actively apply for renewal, else your trademark registration will automatically become inactive.
How to Renew a Trademark
Renewing a trademark is actually pretty simple. You just need to file the appropriate form with the USPTO that shows you’re using the mark, as well as provides a sample of your use. The biggest catch with this process is that this process differs for marks placed on Principle and Supplemental Registers.
For trademarks on the Principle Register, the process goes as follows:
- Register your mark on the Principle Register and receive an official registration date.
- File a Declaration of Use under Section 8 between the 5th and 6th anniversaries after your registration date.
- File a Declaration of Incontestability under Section 15 after your trademark’s 5th year of consecutive use.
- For marks on the Principle Register, this paperwork is usually bundled with the Declaration of Use form. Basically, you’re doing two steps at once.
- Between the 9th and 10th anniversaries of your registration, file the Declaration of Use under Section 8 again. However, this time the form is bundled with the Application for Renewal under Section 9. This is the step that actually renews your trademark.
- Every 9 to 10 years after this last step, you should file again for Use and Renewal under Sections 8 and 9.
For trademarks that fall under the Supplemental Register, there are a few added steps to this process:
- Register your mark on the Supplemental Register and receive an official registration date.
- Use the mark for 5 years of consecutive business.
- File a Declaration of Use under Section 8 between the 5th and 6th anniversaries after registration (in order to maintain your Supplemental Register protections).
- Re-register your mark with the USPTO on the Principal Register.
- Continue the process for trademarks on the Principle Register detailed above.
Sadly, there is no direct path to transfer a Supplemental Register trademark to the Principle Register. You’ll have to file an all new trademark application with the USPTO and continue from the very beginning.
However, throughout this process you must also submit all the required paperwork for maintaining your position on the Supplemental Register. Make sure to note on your new application that your trademark already holds a place on the Supplemental Register.
What about Fees?
Every form you submit has an associated fee. The fees for online applications go as follows:
- Combined Declarations of Use and Incontestability under Sections 8 and 15 – $325
- Declaration of Use under Section 8 only – $125
- Declaration of Incontestability under Section 15 only – $200
- Combined Declaration of Use and Application for Renewal under Sections 8 and 9 – $425
- Application for Renewal under Section 9 only – $300
- Total Cost for forms up to your first renewal if filed correctly – $750 + original registration costs
In addition to the regular filing fees, applicants can file up to 6 months after the required deadline for an additional fee. This surcharge is called a “Grace Period Filing” and costs an additional $100 per trademark class for most all of the required forms.
Paper applications have much higher fees when compared to online applications, and provide few if any benefits, so we won’t detail them in-depth here. However, you can expect an extra cost of several hundred dollars (per trademark class) over the first decade alone if you file exclusively with paper.
Three Forms in More Detail
While there are some other forms surrounding trademark renewal, these are the three you’re required to know about.
Declaration of Continued Use under Section 8
The Declaration of Continued Use is a sworn statement, by the trademark owner, that the mark is in continued use in commerce. After you file your declaration with the USPTO, they’ll send you a Notice of Acceptance if they choose to approve it. If there are problems with your Declaration, they’ll instead send you an Office Action that states the reasons for refusal.
You must first file the Section 8 Declaration sometime between the fifth and sixth year following the original registration. With your application you should provide:
- Your trademark’s serial number.
- This is an eight digit number (for example: “87654321”)
- The name and address of the current owner.
- Any associated fees (detailed above).
- A statement that the mark is in use in commerce.
- A list of goods/services used with the mark.
- One specimen per Trademark Class that displays your mark (tags, labels, advertisements).
- A signed and dated affidavit that supports the above evidence.
When you are submitting your declaration, you are required to indicate which goods you currently use in relation to your trademark. If there are products or services offered previously under the mark, but that you don’t currently provide, you should consider omitting them from your description. Technically, if you list defunct items for sale, you are making a false declaration.
Application for Renewal under Section 9
You will normally bundle your Application for Renewal under Section 9 with your Declaration of Use mentioned above. The general process is the exact same, however the Application for Renewal specifically requires:
- A written request to renew the application, signed by the registrant or the registrant’s representative.
- The original trademark’s registration number, mark, and date of registration (you can find all three on TESS).
- A name and business address for correspondence (usually matches the current owner of the trademark).
- Any associated fees.
Remember, you need to file this application every 10 years after your original registration date. Otherwise, you’ll lose your claim over your trademark.
Declaration of Incontestability under Section 15
The last form we’ll cover in this article is the Declaration of Incontestability. You can think of incontestability as the highest possible protection offered to your trademark. Basically, incontestability is the presumption that you’re using your trademark correctly in all legal cases. The other party must therefore jump through several hoops to legally fight your claim over the trademark.
The USPTO doesn’t “accept” Declarations of Incontestability. They instead simply review whether or not the declaration complies with specific statutory requirements. In addition, you must also include a few other things with your application:
- The registration number and date of registration.
- Any associated fees for each Trademark Class filed under.
- An official statement that:
- The mark has been in continuous use in commerce for a period of at least 5 subsequent years to the date of registration.
- There have been no final decisions against the owner’s claim over the mark.
- There is no current proceedings involving the claimed rights over the trademark, either in the USPTO or in any other court of law.
- A signed affidavit or declaration verifying the statements above.
After accepting all of this information, the USPTO will send you a letter of acceptance in the mail.
As you can see, renewing a trademark is actually quite a simple process. In general, all you have to do is file a specific form with the USPTO every 5-10 years that states you’re using the trademark and want to renew it.
However, you should still speak with an experienced trademark attorney before submitting any of these forms. An attorney can help you avoid common pitfalls that could make the USPTO reject your application. Further, applying correctly with the assistance of an attorney can often cost less than submitting a second application due to the high cost of filing under each class.