Trademark registrations must be renewed between the 5th and 6th year, 9th and 10th year, and every ten years after that by filing a Declaration of Use and/or Excusable Nonuse and an Application for Renewal.
Declaration of Use and/or Excusable Nonuse and an Application for Renewal
Trademarks are different from copyrights or patents because they can last forever. However, to continue to have a trademark registration, trademark owners, or their trademark attorneys, must file a Declaration of Use and/or Excusable Nonuse and an Application for Renewal during the appropriate renewal periods.
The reason trademark owners must file renewal documents is because if trademarks can stay registered without any renewals, then trademarks no longer in use will still be on the trademark register. Trademark renewals ensure that trademarks are still in use and help prevent trademark depletion and congestion.
In addition, trademark owners, or their trademark lawyers, must make sure they are filing the correct renewal and maintenance forms. Depending on how long the trademark has been registered, and whether it was filed via the Madrid Protocol or straight with the USPTO.
The date from when trademark renewal forms are due is decided by when the trademark is registered. The registration date is on the official trademark registration document issued by the USPTO. The registration date can also be seen online through the Trademark Electronic Search System (TESS) and the Trademark Status and Document Retrieval System (TSDR).
Registration date as seen in TESS
Between 5th and 6th Year
The first window to file trademark renewals is five years after the trademark is registered and before the sixth year of the registration begins. In other words, a trademark registered on January 1st, 2000, the first renewal period will open on January 1st, 2005. The trademark owner will have until January 1st, 2006 to file the appropriate renewal document.
If a renewal document is not filed in time, the trademark owner can still file for a trademark renewal during a six month grace period. However, there are additional USPTO fees for filing during the six month grace period.
Registrations not Based on the Madrid Protocol
In between the 5th and 6th year after a trademark is registered, trademarks not filed through the Madrid Protocol must file a Declaration of Use and/or Excusable Nonuse under §8 of the Lanham Act. Along with the filing, the USPTO charges a $125 processing fee if the Section 8 document is filed online through the Trademark Electronic Application System (TEAS).
At a minimum, the Section 8 declaration must include:
Trademark registration number.
Name of current owner and address
The filing fee of $125 if filed using TEAS or $225 if filed on paper for each class of goods or services in the registration.
In addition, the filing must include a statement that the trademark is in use, what goods and services it is still used in connection with, and any listed goods or services no longer in use.
Trademark owners can also state they are not currently using their trademark on some or all of the listed goods or services by stating the last date the trademark was not used in connection with those goods, why non-use began, and when use is expected to begin again.
To keep trademark owners honest in their renewal filings, the USPTO has initiated an audit program where random registrations will be selected. If audited, the trademark owner must show use of the trademark on two randomly selected goods or services.
Homepage for filing a Section 8 Declaration on TEAS
Madrid Protocol Registrations
For Madrid Protocol registrations, trademark owners, or their trademark counsel, must file a Declaration of Use and/or Excusable Nonuse under §71 of the Lanham Act between the fifth and 6th years of registration. A Section 71 filing is essentially the same as a Section 8 filing (see above). The cost to file a Section 71 document is also $125 per class of goods or services if filed through TEAS and $225 per class if filed on paper.
Between 9th and 10th Year
After a renewal is filed between the fifth and sixth year the trademark registration date, trademark owners do not have to file a renewal document until after the ninth year after the trademark registration date, but before the tenth year after the trademark registration date. Similar to the first renewal period, for an added fee, trademark owners can still file the required renewal documents during the six month grace period after the ten year renewal deadline.
Registrations not Based on the Madrid Protocol
In between the 9th and 10th year after a trademark is registered, trademarks not filed through the Madrid Protocol must file a Declaration of Use and/or Excusable Nonuse under §8 of the Lanham Act AND a Renewal Application under §9 of the Lanham Act. To make the filing easier, trademark owners, or their trademark attorney, can file the Section 8 and 9 documents together on one TEAS form.
The requirements for the Section 8 and 9 filing between the 9th and 10th years a trademark is registered are the same as the Section 8 filing between the 5th and 6th years of a trademark registration. For example, the trademark owner must declare what goods or services are still used in connection with the trademark, confirm who the current trademark owner is, and pay the USPTO filing fee.
However, the fee for filing a combined Section 8 and 9 renewal goes up substantially. The USPTO filing fee is $425 if filed through TEAS or $725 if filed on paper per class of goods or services in the registration.
Combined Section 8 & 9 Renewal on TEAS
Madrid Protocol Registrations
Trademark registrations based on the Madrid Protocol follow the same process during the nine to ten year renewal window as the five to six year renewal window. The trademark owner, or their trademark attorney, must file a Declaration of Use and/or Excusable Nonuse under §71 of the Lanham Act.
Unlike non-Madrid Protocol Registrations, the fees stay the same during the second renewal period as the earlier renewal period. The cost to file a Section 71 document is also $125 per class of goods or services if filed through TEAS and $225 per class if filed on paper.
Continued Renewals Required Every Ten Years
After filing a Combined Section 8 and 9 or a Section 71 renewal between the nine and ten year renewal window, trademark owners must file the same renewal documents every subsequent nine to ten year window after that.
For a trademark registered on January 1, 2000, the first ten year window would be January 1, 2009 to January 1, 2010. The second ten year window would be from January 1, 2019 to January 1, 2020. The trademark owner would need to continue to file the required documents and pay the USPTO fee every ten years to keep the trademark registration alive.
Section 15 Incontestability
Filing for trademark incontestability under Section 15 of the Lanham Act gives trademark owners additional benefits and rights not afforded to trademark registrations that have not been determined to achieve incontestable status. The USPTO Section 15 filing fee is $200 if filed through TEAS and $300, if filed on paper),per class of goods or services.
The most common time to file a Section 15 document is in between the fifth and sixth year of renewal. Trademark owners, or their trademark lawyer, can file a combines Section 8 and 15 form through TEAS during the first renewal period. If a trademark owner does not file then, they can file the Section 15 form alone anytime after five years from when the trademark was registered.
Do you have any questions or need an attorney to prepare and file your trademark maintenance and renewal documents? Contact us for a free consultation. or visit our Renewal and Maintenance Services page.