Trademark Renewal Filings: A Complete Guide

Unfortunately, registering your Trademark in the United States Patent and Trademark Office (USPTO) is only the start of your fabulous journey of intellectual property proprietorship.  As we’ve seen in previous articles, the USPTO is a stickler for time and dates and if you do not file the necessary renewal filings, the USPTO may very well cancel your trademark.  The principal purpose behind the USPTO’s Trademark Renewal requirements is to ensure that trademark holders are still in fact using their trademarks, rather than simply forgetting them and letting them go de facto Abandoned.  Indeed, should the trademark holder fail to file the appropriate Trademark Renewal Forms, the USPTO will cancel the Trademark Registration.

What is a Trademark Renewal?

Trademark renewal extends the term of a federal registration. Trademark rights may continue indefinitely while the mark remains protectable, but maintaining a federal registration requires timely filings and compliance with the applicable use or excusable-nonuse requirements.

Key points to know about trademark renewal:

  1. Duration of Trademark Protection: Trademark registration provides protection for a specific period, which varies depending on the country. In many jurisdictions, the initial term of protection is typically ten years from the date of registration.
  2. Renewal Period: Before the expiry of the initial protection term, the trademark owner must file for a renewal to extend the registration. This period usually begins a few months before the expiration date, but the exact renewal timeframe can differ between countries.
  3. Validity of Renewal: A successful trademark renewal extends the protection for another term, usually ten years, from the original expiration date. Subsequent renewals can be filed when each renewed term nears its end.
  4. Requirements for Renewal: The requirements and procedures for trademark renewal vary from country to country. In some jurisdictions, a simple renewal application with the necessary fee may suffice. In others, additional documentation or proof of continued use may be required.
  5. Benefits of Renewal: Renewing a trademark maintains the legal protection of the mark, preventing others from using a confusingly similar mark for similar goods or services. It also helps avoid the risk of losing the mark’s distinctiveness due to non-use.
  6. Non-Renewal and Abandonment: Missing the required maintenance or renewal filings can result in cancellation or expiration of the registration. This is distinct from abandonment of the trademark itself. Rights based on continued qualifying use may survive even after the federal registration is lost.
  7. Monitoring Renewal Deadlines: Trademark owners are responsible for keeping track of their renewal deadlines. Many trademark offices send renewal reminders, but it’s essential to have a system in place to ensure timely renewals.

It’s crucial for trademark owners to understand the renewal requirements and deadlines in their specific jurisdiction to maintain their rights effectively. Seeking advice from a qualified trademark attorney can be beneficial to navigate the renewal process smoothly and ensure the continuous protection of the mark.

Trademark Renewal Filings

 

For U.S. registrations subject to Sections 8 and 9, maintaining a registration requires both declarations concerning use and periodic renewal applications.

A Section 8 declaration of use or excusable nonuse generally must be filed between the fifth and sixth anniversaries of registration. This filing maintains the registration but is not the ten-year renewal.

Between the ninth and tenth anniversaries, the owner generally must file a combined Section 8 declaration and Section 9 renewal application. Combined filings are then required at ten-year intervals, including between the nineteenth and twentieth anniversaries.

Certain filings have a six-month grace period with additional government fees. Registrations based on the Madrid Protocol follow different maintenance and renewal procedures.

The Declaration of Use Requirement

What is a Trademark Declaration of Use?

Fundamentally, a Declaration of Use consists of a “specimen“, or an example of the trademark as it is being used and an accompanying sworn statement which attests to the fact that the trademark is still in use.

Section 8 of the Lanham Act (15 USC Section 1058) sets forth the precise requirements of the Declaration of Use mandate.  How does the trademark holder demonstrate to the USPTO that the mark is still being used in commerce? By swearing use and providing a real illustration of the use (a “Specimen).

For example, suppose that the Registered trademark was for the Clothing Category of Goods (Class 025). To submit an acceptable Declaration of Use, the trademark holder would submit a specimen showing their E-Commerce webpage prominently displaying the trademark along with the ability for a customer to purchase clothing. This Specimen would be accompanied by a Declaration which states that the Owner of the trademark is still selling his clothing in interstate commerce.

 

Steps to Submit a Trademark Declaration of Use

  1.  Contact a Trademark Lawyer and discuss the nature of your application and the timeline of when it was first filed, first issued etc.
  2.  Provide the Trademark Lawyer with your trademark registration number, the original specimen of use, and the current specimen showing Use if different
  3. The Trademark lawyer will fill out the Registration Maintenance and Renewal Form on the USPTO website and with your consent, execute the declaration of use asserting the trademark’s continuous use in commerce for the initially declared goods
  4. The Trademark Lawyer will pay the USPTO filing fee on your behalf and submit the application forms

Trademark Renewal Deadlines

SECTION 8 DECLARATION OF USE

The Section 8 Declaration of Use is required to be filed by the trademark holder between the fifth and sixth years after the official Registration of the trademark. The declaration must be filed along with the specimen and fee which is currently $325/Cl. In the event that you mistakenly miss the deadline, the USPTO provides for a six month grace period whereby you can still file the Declaration of Use, albeit for an extra fee.

SECTION 9 APPLICATION FOR RENEWAL

Between the ninth and tenth anniversaries of registration, the owner generally must file both a Section 8 declaration of use or excusable nonuse and a Section 9 renewal application. These are commonly submitted through a combined filing. The same combined requirements recur at ten-year intervals. A six-month grace period is available with additional government fees.

What are the Trademark Renewal Fees?

As was the case when filing the trademark application, the trademark renewal fees will be a function of the number of classes that are covered under the trademark application. The Section 8 Declaration of Continued Use between the fifth and sixth year entails a government filing fee of $325/Class of goods/services. The USPTO also provides for a combined Section 8 and 9 form (which would take place between the 9th and 10th years after Registration) and in that instance, the USPTO charges a government filing fee of $650/Class of goods/services.

 

Section 15: Declaration of Incontestability of a Trademark

Section 15 provides an optional declaration of incontestability for eligible marks registered on the Principal Register. Eligibility generally requires five consecutive years of continuous use in commerce after registration, continued current use, and satisfaction of the other statutory conditions. These include the absence of certain adverse decisions and pending proceedings concerning the relevant rights.

Incontestability strengthens the owner’s legal position by limiting certain challenges, but it does not make the registration immune from attack or guarantee success in an infringement dispute. Grounds such as genericness, abandonment, and fraud may remain available, along with applicable statutory defenses.

A Section 15 declaration is separate from mandatory maintenance filings and does not replace them. The government filing fee is currently $250 per class.

 

What is the Section 44(e) Trademark Filing Basis?

Section 44(e) is a filing basis under the U.S. federal trademark law (the Lanham Act) that allows foreign applicants to register their trademarks in the United States based on a previously granted foreign registration. It provides a simplified and streamlined process for foreign trademark owners to obtain protection for their marks in the U.S. without requiring actual use of the mark in U.S. commerce.

To be eligible for a Section 44(e) filing, the following conditions must be met:

  1. Foreign Registration: The trademark must have been registered in the applicant’s country of origin or domicile. The registration must be in force and subsisting at the time of filing the U.S. application.
  2. Substantially Similar Goods or Services: The goods or services covered by the U.S. application must be the same or substantially similar to those covered by the foreign registration. It is essential to ensure that the descriptions of goods or services align as closely as possible to avoid any potential issues with the filing basis.
  3. Certification of Home Registration: The applicant must provide a certification or a certified copy of the foreign registration from the appropriate trademark office as evidence of the existing registration.
  4. Declaration of Bona Fide Intent to Use: While actual use of the mark in the U.S. is not required at the time of filing, the applicant must still declare a bona fide intent to use the mark in U.S. commerce in the future.

The Section 44(e) filing basis simplifies the registration process by allowing foreign applicants to rely on their existing foreign registration, making it easier and more cost-effective to secure trademark protection in the United States.

Once issued, a U.S. registration under Section 44(e) is independent of the foreign registration. Later expiration or cancellation of the foreign registration does not, by itself, cancel the U.S. registration. The U.S. registration remains subject to U.S. maintenance requirements and applicable grounds for cancellation.

As with any trademark application, it’s advisable to seek guidance from a qualified trademark attorney to ensure compliance with all requirements and to understand the best strategy for protecting your mark in the United States.

What Are Common Trademark Renewal Scams?

Common trademark renewal scams are deceptive practices aimed at tricking trademark owners into paying unnecessary or inflated fees for their trademark renewals. These scams can take various forms and are designed to exploit trademark owners’ lack of knowledge about the renewal process. Here are some common trademark renewal scams to be aware of:

  1. Fake Invoices: Scammers may send official-looking invoices through postal mail or email, pretending to be from a government agency or a reputable trademark office. These invoices request payment for trademark renewal fees but are not legitimate. They often use language that suggests urgent action is required to renew the trademark.
  2. Unsolicited Communication: Scammers may contact trademark owners by phone, email, or mail, claiming that their trademark is about to expire and offering renewal services for a fee. These unsolicited communications are usually not from legitimate trademark authorities.
  3. Deceptive Websites: Scammers may create websites that mimic official trademark office websites, complete with logos and branding, to make them look authentic. These websites offer trademark renewal services but are not affiliated with any legitimate government agency.
  4. Misleading Language: Scammers may use misleading or confusing language in their communications to make trademark owners believe they must renew their trademarks immediately through their services.
  5. Overcharging: Some scam companies offer to renew trademarks for significantly higher fees than the actual cost of renewal, taking advantage of trademark owners’ lack of knowledge about the renewal process.
  6. Impersonation of Officials: Scammers may pose as representatives of official trademark offices or government agencies, asking trademark owners to provide sensitive information or make payments over the phone.

To protect yourself from trademark renewal scams, consider the following tips:

– Be cautious of unsolicited communication regarding trademark renewals.

– Verify the source of any renewal notice or invoice you receive.

– Only work with reputable trademark attorneys or agents for your trademark renewal needs.

– Double-check the official website and contact information of your country’s trademark office.

– Keep track of your trademark renewal deadlines and take action in advance.

– If in doubt, consult with a qualified trademark attorney or contact your country’s trademark office directly to verify the legitimacy of any communication or renewal request.

Staying vigilant and informed can help you avoid falling victim to trademark renewal scams and ensure that your valuable trademarks remain protected without unnecessary expenses.

When Should I Start The Trademark Renewal Process?

You should start the trademark renewal process well in advance of your trademark’s expiration date. The exact timing can vary depending on the country or jurisdiction where your trademark is registered, but it’s generally advisable to begin the renewal process at least 6 to 12 months before the expiration date.

Here are some reasons why starting early is crucial:

  1. Processing Time: The renewal process may take some time, especially if you encounter any issues or delays. Starting early allows you to navigate any potential challenges without the pressure of an impending deadline.
  2. Avoiding Lapses in Protection: If your trademark registration lapses due to a missed renewal deadline, you could lose the protection you’ve built over the years. Renewing early ensures continuity in your trademark’s protection.
  3. Grace Periods: Some jurisdictions offer a grace period after the expiration date during which you can still renew your trademark. However, grace periods often come with additional fees, and the protection may not be continuous. Renewing early helps you avoid relying on grace periods.
  4. Verification and Updates: Renewing in advance gives you ample time to review and verify all the information related to your trademark, such as the goods or services covered, ownership details, and contact information. You can make any necessary updates or corrections during this period.
  5. Budget Planning: By starting early, you can plan your budget and allocate funds for the renewal fees without any last-minute financial strain.
  6. Legal Assistance: If you work with a trademark attorney, they will have enough time to prepare and file the renewal application correctly and address any potential issues.

In summary, don’t wait until the last moment to renew your trademark. Mark the expiration date on your calendar, and start the renewal process well in advance to ensure a smooth and timely renewal, maintaining the protection of your valuable trademark rights.

What Documents Or Information Do I Need For The Renewal Application?

The specific documents and information required for a trademark renewal application can vary depending on the country or jurisdiction where your trademark is registered. However, here is a general list of common documents and information typically needed for a trademark renewal application:

  1. Renewal Application Form: Most jurisdictions require you to complete a renewal application form specific to that country’s trademark office. The form usually includes basic information about the trademark, the owner, and the renewal request.
  2. Trademark Registration Number: You will need the registration number of your existing trademark to identify the mark being renewed accurately.
  3. Proof of Existing Registration: In some cases, you may be required to provide a copy of your current trademark registration certificate or a certified copy of the original registration.
  4. Declaration of Use: Depending on the jurisdiction, you may need to provide a declaration or statement confirming that the trademark is still in use for the goods or services covered by the registration. This is typically required for countries that mandate proof of ongoing use for renewal.
  5. Goods and Services Specification: Some countries may require you to reconfirm or update the list of goods and services covered by the trademark registration.
  6. Power of Attorney: In certain jurisdictions, if you are using a trademark attorney to handle the renewal on your behalf, you may need to provide a power of attorney authorizing them to act on your behalf.
  7. Renewal Fee: You will need to pay the appropriate renewal fee as set by the trademark office. The fee amount can vary depending on factors such as the length of the renewal term and the number of classes covered by the registration.
  8. Proof of Payment: Keep a record of the payment transaction, such as a receipt or acknowledgment of payment, as evidence that the renewal fee has been paid.
  9. Contact Information: Ensure that your contact information is up to date, as the trademark office may need to reach you for any updates or notifications regarding the renewal process.

It’s essential to carefully review the specific requirements of the trademark office in the relevant jurisdiction to ensure you gather all the necessary documents and information correctly. If you have any doubts or questions about the renewal application process, consider seeking guidance from a qualified trademark attorney who can help you navigate the requirements and ensure a successful renewal.

What Happens If I Miss The Renewal Deadline?

For U.S. registrations subject to Sections 8 and 9, the required maintenance or renewal filing generally may still be submitted during a six-month grace period after the regular deadline, with additional government fees. A proper filing during that grace period can maintain the existing registration.

If the applicable grace period expires without the required filing, the registration will generally be cancelled or expire. A new application may be necessary unless a limited corrective procedure applies. Do not assume that an ordinary missed maintenance deadline can be remedied through a petition.

Loss of a federal registration does not automatically eliminate every trademark right. Rights arising from continued qualifying use may remain, depending on the circumstances. Contact counsel promptly to evaluate the registration status and available options.

Trademark Renewal Quick Notes:

What Will I Need to File Trademark Renewal Forms?

Principally, trademark renewal documents include specimens which show that the trademarks are still being used in commerce and declarations which attest to the fact that the trademarks are indeed still in use.

 

I missed the Filing Dates: Is it too late?

Not necessarily. A six-month grace period generally applies to Section 8 and Section 9 filings, with additional government fees. After that period expires, the registration generally cannot be maintained through an ordinary late filing. Check the registration status promptly with counsel. Loss of registration does not automatically extinguish any surviving common-law rights.

Does the Declaration of Use Filing Cost Money?

Unfortunately, the answer here again is Yes. The USPTO charges money to process and review the filing.

Keep Everything Documented

Remember, the United States Patent and Trademark Office (USPTO) absolutely hates waste and does not want an individual to claim rights to a trademark that is no longer in use.  Therefore, one must both initially obtain a trademark registration and keep the trademark registration by periodically declaring to the USPTO that the mark is still being used in commerce.  The applicant is required by the USPTO to submit a Declaration of Use no later than the 6th year post-registration, then once again prior to the ten year anniversary, and on a recurring basis, every ten years after.