Trademark Renewals

To maintain the mark, the registrant must file a statement of use, referred to as a Section 8 Declaration:

between the fifth and sixth years following the date of registration, and include a fee in the amount of $100 USD per class, and

between the ninth and tenth years following the date of registration, and include a fee in the amount of $100 USD per class

For a USPTO form, see the Declaration of Use under Section 8.

The period for filing this statement may be extended for six months following the sixth and tenth years after the registration date, for a fee in the amount of $100 USD per class.

A renewal application, referred to as a Section 9 Renewal Application, must be filed between the ninth and tenth years following the date of registration, and include a fee in the amount of $400 USD per class

The period for filing the renewal application may be extended for six months following the sixth and tenth years after the registration date, for a fee in the amount of $100 USD per class.

Since the Section 8 Declaration due date coincides with the due date of the Section 9 Renewal Application, the USPTO created the electronic form entitled Combined Declaration of Use/Application for Renewal under Sections 8 and 9.

If the Section 8 Declaration and the Section 9 Renewal Application are not filed, the trademark registration will expire

The registrant may also file a Declaration of Incontestability, referred to as a Section 15 Declaration, which requires a fee in the amount of $200 USD per class.  For a USPTO form, see Declaration of Incontestability under Section 15

Since the Section 8 Declaration due date coincides with the due date of the Section 15 Declaration, the USPTO created the electronic form entitled Combined Declaration of Use and Incontestability under Sections 8 and 15.

With an incontestable status, the registration owner is protected from challenges that its trademark is:

not inherently distinctive or lacks secondary meaning,

confusingly similar to the mark of another, which was used prior to the owner's registration, or

simply functional.

The Section 15 declaration may be filed within one year after the expiration of either any five-year period of continuous use following registration.

The aforementioned fees are subject to change.  The USPTO typically increases its fee in October.  For current fees, see the USPTO Fee Schedule

If you have a question about trademark renewals, askme at thedford@askmeip.com.