Once you have obtained a U.S federal trademark registration, you must take certain steps to maintain the registration. Otherwise the U.S. Patent and Trademark Office (USPTO) will cancel your registration.
To maintain your U.S. trademark registration, you must
- Submit a Declaration of Use (also called a Section 8 Filing); this must be done between the 5th and 6th year after your registration was issued, and then again as part of every renewal
- Renew the registration (also called a Section 9 Filing); this must be done between the 9th and 10th year after your registration was issued, and ever 10 years thereafter
Declaration of Trademark Use
Showing use of your mark is done by filing a Declaration of Use.
You must file a Declaration of Use no later than the 6th year after it is registered, then again before the 10th year, and then again every 10 years after that. As part of the Declaration of Use, you must file three things with the USPTO:
- A declaration (a formal, legally binding statement) that lists which items in your registration you are currently selling in the United States.
- An image showing your trademark as it appears on your products or as used in connection with your services
- The required government fee (currently $125 for each class of goods or services)
When you prepare your declaration, you indicate which goods should be deleted from your registration. Anything that you are not currently selling should be deleted. Don’t worry about doing that—it’s very common. But don’t make the mistake of trying to keep everything in your registration even if you aren’t selling some of the items. If you do, you risk having the entire registration cancelled because you made a false declaration about how you were using it.
Renewing Your Trademark Registration
Separately from the requirement to declare continued use of your trademark, you must renew the registration. This is done every ten years. The renewal is more expensive—the current government fee is $300 for each class of goods or services.
If you have a trademark attorney help you prepare and file these documents, the attorney will charge legal fees that are in addition to the government filing fees discussed here. The cost of the attorney’s services will normally be from $300 to $2000, depending on how many classes of goods are in your trademark and on any complications that arise.
Since you must also show use of your mark every ten years, you will file a Declaration of Use and a Renewal at the 10 year mark, the 20 year mark, etc. This is called a Combined Section 8-9 Filing.
The Declaration of Use and the renewal are normally done through the USPTO website using their electronic filing system called TEAS. You can enter the required data in a form, upload images and credit card information, and receive confirmation via email.
The dates for renewal are critical. If you ignore them, the USPTO will simply cancel your registration. All renewal dates are measured from the date that your trademark registration was issued—not from the date you filed the application or the date that the application was published.
The first Section 8 filing is due on the sixth anniversary of the registration date. It can be filed as early as the fifth anniversary date. It can also be filed up to six months after the sixth anniversary but this is called a “grace period” filing and required extra filing fees.
The second Section 8 filing and the first renewal are due on the tenth anniversary of the registration date. These can be filed as early as the ninth anniversary date. They can also be filed up to six months after the tenth anniversary but this is called a “grace period” filing and required extra filing fees.
Here is an example to see how the dates work out. Suppose that your trademark registration was issued on March 15, 2013. Here are the applicable dates to maintain your registration at the USPTO:
- Earliest date you can file the first Section 8 (Declaration of Use): March 15, 2018
- Normal due date of the first Section 8: March 15, 2019
- Last possible date to file the first Section 8 (with extra fees): September 15, 2019
- If you miss this date, your registration will be cancelled.
- Earliest date you can file the first combined Section 8-9 (Declaration of Use and Renewal): March 15, 2022
- Normal due date of the first renewal (combined Section 8-9): March 15, 2023
- Last possible date to file the first renewal (combined Section 8-9) (with extra fees): September 15, 2023
- If you miss this date, your registration will be cancelled.