You have probably invested time and money into getting your trademark registration. In keeping the registration alive, you need to know how to renew a trademark to protect your valuable asset.
How Long Does a U.S. Trademark Last?
Rights in a federally registered trademark can last forever. But in order to maintain your registration, you should continue using the mark in commerce and file the required maintenance documents with the required fees at regular intervals. Failure to file these documents will result in the cancellation of your federal registration. Therefore, having an attorney spares you the risk of losing your registration.
How Often Do I Have to Renew a Trademark?
Between the 5th and 6th year after the registration date, you need to file a Section 8 Form. Between the 9th and 10th year, you need to file a Combined Sections 8 and 9 Form. Every subsequent ten years, you continue to file Combined Sections 8 and 9 Forms.
So how to calculate the due dates? Let’s say the registration date of your trademark is June 10, 2021. Adding six years gives you the first due date: June 10, 2027. Adding ten years to the registration date shows the second due date: June 10, 2031. Then every ten years going forward is the next due date: June 10, 2041, June 10, 2051, and so on. You can file the maintenance and renewal document up to one year before the due date. So you don’t have to wait until the last day to renew your trademark.
When applying for trademark renewal, the USPTO does grant a six-month grace period after each of the above deadlines. You can still file during the grace period by paying an additional fee. However, if you miss the deadline of the grace period, your registration will be canceled or expired.
What Happens if My Trademark Expires?
Timely trademark renewal is a critical step to protect your business or brand. If you forgot to file your trademark renewal or did not know how to renew the trademark, it will expire. The USPTO will cancel your trademark registration, and you will lose the nationwide protection that the federal registration creates.
At that point, unlike an abandoned application, there is no opportunity to revive the registration. Your registration will be dead, and you will have to start all over again by filing an initial trademark application. To view USPTO’s renewal fees and initial application fees, you can read our blog How Much Does a Trademark Cost in 2021.
So, make sure to pay attention to your registration date and set a reminder for trademark renewals. If you do not know how to renew trademarks, hiring an attorney saves you time and energy. A trademark attorney can help keep your registration alive.
What Is The Trademark Renewal Process?
You need to renew your trademark with the USPTO and show you regularly use it in commerce. Trademark renewal lets you keep the protection benefits of owning the trademark. We will discuss the steps on how to renew trademarks.
Step 1: Prepare the Maintenance and Renewal Documents
To maintain a U.S. federal registration, a Section 8 form and subsequent combined Sections 8 and 9 forms are needed. In contrast, if you have an international trademark registration through the Madrid Protocol, a Section 71 declaration is required.
Section 8 Declaration
Between the 5th and 6th year of the registration date, you need to file a Section 8 declaration of use, which includes the following information:
- A signed and dated statement that you are continuing to use the trademark.
- A list of goods and services that use the trademark. If any goods and services no longer use your trademark, you must delete them before filing for renewal.
- A specimen, which shows your trademark in use. Examples include any tags, labels, or packaging that are affixed to your products and advertisement for services. You can view examples of specimens here, https://www.uspto.gov/trademarks/laws/specimen-refusal-and-how-overcome-refusal.
Combined Sections 8 & 9 Form
Between the 9th and 10th years of the registration date, you need to file a combined Sections 8 and 9 Form, which includes the Section 8 declaration of use and Section 9 renewal application. A Section 9 renewal application is a written request form to keep your trademark registration active. Then every ten years, you need to file a subsequent combined Section 8 and 9 Form for trademark renewal.
Step 2: File Trademark Renewals
All steps to renew a federal trademark go through the USPTO using the TEAS (Trademark Electronic Application System). You can log in or set up your account to maintain and renew your trademark here.
By the end of the first six-year period after the registration date, you will file a Section 8 declaration through TEAS, which costs $225 per class.
By the end of every ten years after the registration date, you will file a combined Section 8 declaration of use and Section 9 renewal application through TEAS, which costs $525 per class.
The Section 8 declaration and the combined Sections 8 and 9 form are mandatory filings. Failure of timely filing will result in the cancellation of your registration.
If you have international trademark protection through the Madrid Protocol, you will file a Section 71 declaration using the TEASi (Trademark Electronic Application System International).
Step 3: After Filing for Trademark Renewals
Once you file all maintenance documents, a USPTO post-registration trademark examiner will review your renewal. Typically, after 1-2 months, the USPTO will issue a notice or an office action.
If the USPTO accepts your Section 8 declaration and/or Section 9 renewal, you will receive a Notice of Acceptance and/or Notice of Renewal.
If the USPTO does not accept your trademark renewal or if your Section 8 submission is subject for review under The Post-Registration Audit Program, you will receive an office action. If you do not respond, the USPTO can cancel your registration or let it expire.
You can check the status of your trademark renewal and registration through the TSDR (Trademark Status and Document Retrieval). The USPTO recommends checking your trademark every six months. You can view the list of current wait times for 2021 here, https://www.uspto.gov/dashboard/trademarks/application-timeline.html.
Meeting all deadlines with proper documents and requirements makes renewing trademarks difficult. Having a trademark attorney helps maneuver through the renewal process.
AMPACC specializes in trademark law. Our experienced attorneys can help prevent you from losing the nationwide protection of your trademark. If you need any assistance with trademark renewal, please feel free to contact us https://ampacc.com/contact-us/