In order to maintain your U.S. trademark registration, you have to file certain documents. If you don’t, the U.S. Patent and Trademark Office (USPTO) will cancel your registration.
The deadlines for the required filings are:
- A Declaration of Use (also called a Section 8 Filing) must be filed between the 5th and 6th year after your registration was issued, and then again as part of every renewal
- A Renewal (also called a Section 9 Filing) must be filed between the 9th and 10th year after your registration was issued, and ever 10 years thereafter
But I Missed the Deadline
If you miss the deadline for filing the Declaration of Use or the Renewal, you can file up to six months late, during the Grace Period. You don’t need to ask for an extension–just go online to www.uspto.gov and file the Declaration of Use or Renewal late. The fees will be updated to reflect that you are filing late.
The grace period is 6 months. So, you can file the first Declaration of Use up to 6 years and 6 months after the date of registration.
You can file the first Renewal (with combined Declaration of Use) up to 10 years and 6 months after the date of registration. (See the date example below.)
If you do not file during the Grace Period, your registration will be cancelled by the USPTO. The USPTO often takes some time to actually cancel the registration when you don’t file things on time. But you cannot revive a registration when the filings were not made. The registration is effectively dead even if it is not yet listed as “Cancelled.” At that point, the only option is to file a new application.
When Is the Use Required?
If you are filing the Declaration of Use during the Grace Period, your use of the trademark can occur during the Grace Period. Suppose that you registered a trademark and have not started selling (if you are outside the US) or you stopped selling for a while, but then you have a few sales that occur 6 years and 5 months after registration. You can still submit the Declaration of Use in the Grace Period and maintain the registration.
What are the Fees?
The government fees that you pay to the USPTO for a Declaration of Use are $ 125 per class.
If you file the Declaration of Use during the Grace Period, add $ 100 per class
The government fees that you pay to the USPTO to Renew a trademark are $ 300 per class.
If you file the Renewal during the Grace Period, add $ 100 per class
So, if you are filing a Declaration of Use during the Grace Period between 6 and 6 1/2 years after registration, you will pay $ 225 per class.
And if you are filing a combined Renewal/Declaration of Use during the Grace Period between 10 and 10 1/2 years after registration, you will pay $ 625 per class.
Show me those Dates again
Here is an example to see how the dates work out for the Grace Period. Suppose that your trademark registration was issued on March 15, 2014. 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, 2019
- Normal deadline for the Declaration of Use: March 15, 2020
- End of the Grace Period–Last possible date to file the Declaration of Use (with extra fees): September 15, 2020
- 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, 2023
- Normal deadline for the first combined Section 8-9: March 15, 2024
- End of the Grace Period–Last possible date to file the first combined Section 8-9 (with extra fees): September 15, 2024
- If you miss this date, your registration will be cancelled.