Trademarks can last forever. However, they do require maintenance in the form of renewal filings with the United States Patent and Trademark Office (USPTO) in order to keep your trademark rights active and enforceable. In this blog post, we will explain the process of renewing a trademark registration, the deadlines and fees involved, and the benefits of doing so.
What is trademark renewal?
Trademark renewal is a process of maintaining and extending the registration of a trademark by filing certain documents and fees with the USPTO. Trademark renewal is required between years 5 and 6 after your initial registration, again once your trademark has been registered for 10 years, and then every 10 years after that. It should be accompanied by a declaration and a specimen of continued use in commerce. Trademark renewal can be done within one year before the registration expires, or within a six-month grace period for an extra fee. Trademark owners should receive a notice about a year before their first maintenance documents must be filed.
Trademark renewal is a professional service and it is generally advisable to seek the help of a trademark attorney.
Why is trademark renewal important?
Trademark renewal is important for several reasons:
It shows that you are still using your trademark in commerce and that you have not abandoned it;
It prevents your registration from expiring or being canceled, which would make you lose your nationwide protection and priority rights;
It allows you to claim incontestable rights after five years of continuous use, which means that your registration cannot be challenged on grounds of descriptiveness, genericness, or functionality; and
It helps you avoid confusion or conflicts with other trademark owners or applicants who may try to register similar marks.
How to renew a trademark registration?
All steps to renew a federal trademark go through the USPTO using TEAS (Trademark Electronic Application System). You can log in or set up your account to maintain and renew your trademark there.
By the end of the first six-year period after the registration date, you will file a Section 8 declaration through TEAS, which currently costs $225 per class. A Section 8 declaration is a form filed by the owner requiring a verified statement of use in commerce, a specimen for each class, and a fee per class.
If you have continuously used your mark registered on the Principal (not Supplemental) Register in commerce for five consecutive years after the date of registration, you may also file a Section 15 declaration of incontestability through TEAS for $200 per class. A Section 15 declaration is a form filed by the owner requiring a verified statement claiming incontestable rights as to the validity of the registration, and a fee per class.
You can file a combined Section 8 and Section 15 declaration through TEAS, which presently has a $425 per class government filing fee.
By the end of the tenth year after the registration date, and every ten years thereafter, you will file a combined Section 8 and Section 9 declaration through TEAS for $525 per class. A Section 9 declaration is a request to renew the registration before it expires, and a fee per class.
You can file these declarations within one year before the due date, or within a six-month grace period for an extra fee of $100 per class.
If you fail to file these declarations on time, your registration will expire or be canceled.
What are some tips for trademark renewal?
Here are some tips to help you with your trademark renewal process:
Keep track of your deadlines and set reminders for yourself.
Keep your email address updated with the USPTO so that you can receive important notices.
Keep using your trademark in commerce as registered and avoid making any changes that may affect its distinctiveness or scope of protection.
Keep records of your trademark use and specimens for each class.
Seek professional advice from trademark attorneys or lawyers if you have any questions or concerns about your trademark renewal.
We hope this blog post has helped you understand the process of renewing a trademark registration. If you need more information or assistance with your trademark matters, please contact us today. We are happy to help!