Trademark Renewal

It has been 5 years since you’ve received your trademark registration, now what?

Trademarks have to be renewed between year five but before year six. For an additional fee you can wait until year six and a half after you have received your trademark registration. A trademark registrant files will need to file a Section 8 Declaration and can opt to file a Section 15 Declaration of Incontestability as well for an additional fee.

The basics.

A Section 8 Declaration is a sworn statement, made by the trademark registrant. This statement is stating that the trademark has been used continuously since the trademark has been registered. This Section 8 Declaration is mandatory, if it is not filed at the appropriate time, you will lose your trademark registration.

A Section 15 Declaration is optional. This requires the filing of a sworn statement that:

• Under the Lanham Act, a Section 15 Declaration is optional. You can claim incontestability when:

  • There hasn’t yet been a final decision against your claim of ownership or right to register the trademark

  • There is not proceeding pending regarding the trademark

  • It’s within one year of a five-year period of consecutive and continuous trademark use from the date of registration

  • The mark hasn’t become generic

A Section 15 Declaration makes the trademark registration “incontestable”. This means others cannot come forward to challenge the validity of your trademark registration and claim they have superior rights. For instance, if you and a competitor have had the same name for 10 years and they never filed for a trademark, they could now not come forward to contest your registration. This is highly recommended but not mandatory.

Congrats, you’ve been in business 10 years. Now what?

You’re not off the hook yet. Your trademark can last forever as long as you are using the mark in commerce. Now, every 10 years you will have to renew your mark with a Section 9 Renewal along with a Section 8 Declaration to prove use. This is between year 9 and 10 and every 10 years after that.

Fees:

• Section 8 filing fees are $225 per class.

• Section 8 and Section 15 filing fee is $425 per class.

• Section 9 filing fees are $300 per class.

• Section 8 and Section 9 filing fees are $400 per class.

For more information: https://www.uspto.gov/trademarks/maintain.

Need a renewal? Please reach out via our Contact Us page with your name and registration number.