Trademark registration is a crucial step in protecting your brand, but registration alone is not enough. To preserve your trademark rights and ensure your registration remains valid, you must follow certain legal requirements, deadlines, and best practices. Failing to do so can result in your trademark being canceled, exposing your business to loss of brand exclusivity, confusion in the marketplace, and legal vulnerabilities.
This guide provides a thorough overview of how to maintain a trademark registration with the United States Patent and Trademark Office (USPTO), including timelines, declarations, renewals, and proactive steps for long-term brand protection.
Why Trademark Maintenance Matters
Unlike patents or copyrights, trademarks can potentially last forever—so long as they are actively used in commerce and maintained properly. Trademark rights are tied to usage. If you stop using your mark or fail to comply with required filings, your rights can lapse or be challenged by others.
Maintaining your trademark isn’t just about paperwork; it’s about demonstrating ongoing use of your mark in connection with the goods or services for which it was registered. It’s also about defending your brand identity in a competitive marketplace. Neglecting maintenance can lead to cancellation, and once that happens, competitors or counterfeiters may jump at the opportunity to capitalize on your lapse.
Understanding USPTO Maintenance Filings
The USPTO has a clear system for maintaining trademark registrations. The most common mistake trademark owners make is assuming that once a registration certificate is issued, the mark is protected for life without further action. In reality, multiple filings are required to keep your mark alive.
Section 8 Declaration (Continued Use)
This is the first major maintenance filing due between the 5th and 6th year after registration. It’s a sworn statement confirming that the trademark is still in use in commerce. You must also submit a “specimen” that shows the mark as used on or in connection with your goods or services (e.g., a product label, website screenshot, or packaging).
Failing to file a Section 8 Declaration will result in the cancellation of your trademark registration—even if you are still using the mark.
Section 15 Declaration (Incontestability)
While not mandatory, a Section 15 Declaration can significantly strengthen your legal position. This filing can be made after five years of continuous use and declares that your trademark is now “incontestable.” Once accepted, this status limits the grounds on which your mark can be challenged. It essentially tells the world that your ownership is no longer up for debate—except under very limited circumstances.
Combining Section 8 and Section 15 filings is common and efficient when filed together between years 5 and 6.
Section 9 Renewal
Ten years after registration, your trademark is due for renewal. The Section 9 Application is filed in combination with another Section 8 Declaration to verify continued use. You’ll need to submit updated specimens and pay the necessary fees for each class of goods/services covered.
This combined Section 8/9 filing is then repeated every ten years to maintain your registration.
Timeline at a Glance
● Years 1-5: Actively use the trademark in commerce. Keep detailed records.
● Year 5-6: File Section 8 (and optionally, Section 15).
● Year 9-10: File combined Section 8 & 9 renewal.
● Every 10 years thereafter: File combined Section 8 & 9 again.
There is a six-month grace period for each filing deadline, but additional fees apply. Missing this window will result in cancellation of your registration.
Avoiding Common Pitfalls
Even diligent business owners can unintentionally allow a registration to lapse. Here are some of the most frequent oversights and how to avoid them.
1. Misunderstanding What “Use in Commerce” Means
To maintain your registration, your trademark must be used in connection with all the goods or services listed in the registration. “Use” means more than internal documents—it must be public-facing, such as product packaging, advertisements, or website displays.
If you’re no longer using the mark for certain goods, it’s better to amend your registration accordingly than risk filing a fraudulent declaration.
2. Missing Deadlines
Deadlines for Section 8, Section 9, and Section 15 filings are strict. The USPTO doesn’t send reminders unless you’ve provided updated contact info. Missing these deadlines could undo all the time and money you spent securing your registration.
Use a docketing system, attorney services, or automated trademark monitoring tools to track important dates.
3. Not Updating Ownership or Contact Info
Business changes—like mergers, acquisitions, or address changes—can render your registration records outdated. Always update the USPTO if the trademark owner’s name or contact information changes. Failure to do so can result in missed notifications or filing issues.
4. Using the Wrong Specimen
Submitting an improper or outdated specimen is a common error. The USPTO wants to see current use that directly links your trademark to the goods or services claimed. For example, a domain name alone is usually not sufficient unless it’s part of a functional webpage promoting or selling your product.
Long-Term Brand Strategy: Enforcement and Monitoring
Maintenance isn’t only about filings—it’s about vigilance. The USPTO doesn’t monitor the marketplace for you. If someone begins using a confusingly similar trademark, it’s up to you to act.
Trademark Watch Services
Investing in a trademark monitoring service can alert you to newly filed marks that may conflict with yours. This allows you to take early action, such as filing an opposition or sending a cease-and-desist letter, before damage is done.
Online Infringement
Monitor e-commerce platforms, social media, and search engines for unauthorized use. Platforms like Amazon and Meta have built-in reporting tools to help trademark owners remove infringing content quickly.
Enforcement Options
When infringement occurs, your options may include:
● Sending a cease-and-desist letter
● Filing a DMCA takedown for online copyright violations tied to your mark
● Initiating a TTAB opposition or cancellation
● Filing a trademark infringement lawsuit in federal court
If your mark has attained incontestability through Section 15, your position in enforcement litigation is stronger.
Keeping Evidence of Use
It’s essential to regularly document your trademark’s use in commerce. Here’s what you should retain:
● Product packaging showing the trademark
● Invoices and receipts linking the goods or services to the mark
● Advertising materials (digital and print)
● Screenshots of website use with visible timestamps
● Social media promotions using the mark
This documentation can help substantiate maintenance filings and defend against cancellation petitions alleging non-use.
International Trademark Maintenance
If you’ve extended your U.S. registration internationally through the Madrid Protocol, maintenance requirements in each designated country may vary. Some jurisdictions require local proof of use, while others do not. It’s crucial to understand each country’s rules and coordinate with local counsel.
You also must continue to maintain your U.S. “home registration.” If your U.S. registration is canceled within five years of international registration under Madrid, your international protection may collapse as well.
When to Hire a Trademark Attorney
Trademark maintenance can seem deceptively simple—but many business owners lose protection because they misunderstood or mishandled their filings. A trademark attorney can help by:
● Docketing deadlines
● Preparing accurate declarations and specimens
● Advising on enforcement strategy
● Managing international portfolios
● Monitoring for infringement or competing marks
Legal support is especially helpful if your brand spans multiple product lines, classes, or countries.
Final Thoughts
Trademark ownership isn’t a one-time task. It’s an ongoing responsibility that requires attention, documentation, and timely action. When maintained properly, your trademark can be a cornerstone of your business value, consumer trust, and competitive advantage.
Whether you’re a small startup or a national brand, the cost of neglecting maintenance is steep. By proactively managing your trademark portfolio, using your mark consistently, and taking action against infringement, you can ensure your registration continues to protect what you’ve built—now and for years to come.