In this post, we are delving into a topic that holds crucial importance for anyone who has invested time, money, and effort into building a brand: trademark renewals. If you’ve ever wondered whether your hard-earned trademark can stand the test of time, the short answer is yes, but it’s not as simple as setting it and forgetting it.

The Basics: Trademark Renewal and Maintenance

Use It Or Lose It

Let’s start with the basics. In the United States, trademarks are registered with the United States Patent and Trademark Office (USPTO). Once your trademark is approved and officially registered, however, it is not a one-and-done deal. You must regularly demonstrate use throughout the life of your trademark and file the appropriate maintenance documents to ensure your registration remains in force and you keep its benefits.

As long as you continue using your trademark in commerce and keep up with all of the renewal deadlines, a federal trademark registration can last forever.

Trademark Maintenance Timeline

The USPTO requires trademark owners to file specific documents at different intervals after the registration date to maintain their trademark rights. Let’s break it down:

Between Years 5 and 6:

The first maintenance milestone occurs between the 5th and 6th years after registration. At this point, you’ll need to file a Declaration of Use (or Excusable Nonuse) under Section 8 of the Lanham Act. This form verifies that you are still actively using the trademark in commerce. To show proof of use, you’ll also need to submit a specimen showing current use of the mark.

At this time, it’s worth considering filing a Section 15 Declaration of Incontestability if you’ve exclusively and continuously used your mark during the last 5 years. While optional, this declaration strengthens your rights by claiming incontestable status. You can only file the Declaration of Incontestability once per registration, but you must file it within one year after using the mark continuously in commerce for five years after registration.

Between Years 9 and 10 (and every 10 years thereafter):

As your trademark approaches its 10th birthday and every 10 years thereafter, it’s time for another round of maintenance. This involves filing both a Declaration of Use under Section 8 and an Application for Renewal under Section 9. The Declaration of Use reaffirms your continued use of the trademark, while the Application for Renewal extends its registration for another decade.

These maintenance filings are more than just bureaucratic hoops to jump through. They’re crucial steps in protecting your brand identity. By demonstrating ongoing use of your trademark, you’re reinforcing its validity and preventing others from challenging its status.

Is There a Grace Period for Filing Trademark Renewal?

What happens if you miss a deadline? Don’t panic just yet. The USPTO allows for a six month grace period following the expiration of each deadline, during which you can still file the necessary documents (with an additional fee, of course). Failure to file the necessary documents during the renewal period or the grace period, however, will result in the cancellation of your trademark registration.

By staying on top of maintenance filings and actively protecting your brand, you can ensure that your trademark remains a valuable asset for years to come. For assistance with your trademark renewals, please use the form below to contact me.