Trademark registrations need to be renewed at certain periods for the owner to keep the registration and the benefits of having a registered trademark. In a way, trademark registrations are similar to food items as they both have an expiration or best-before date.
However, trademark registrations can be renewed unlike food items and other perishable goods. Upon renewal, trademark owners gain a new expiration date, basically extending the duration or length of time you can continue using your trademark exclusively in commerce.
Failure to renew your trademark by the deadlines could result in the expiration or cancellation of the mark’s registration. Not only can a trademark registration be renewed; it is actually required for business owners who want to maintain exclusive usage of their registered marks.
Click here if you want more background on the meaning of a trademark.
Requirements for Maintaining Trademark Registration
Here in the U.S., all trademark registrations (as well as applications) are handled by the U.S. Patent and Trademark Office (USPTO). There are three requirements businesses or trademark owners should meet in order to renew and maintain a U.S. trademark registration. These include:
Continue using the registered trademark in interstate business dealings
Ensure that all correspondence details, such as email addresses, are updated and current with the USPTO
File the required registration maintenance documents on time and pay all necessary fees
As per the first requirement, trademark owners must show proof that they use their registered marks in interstate commerce. This is done by submitting samples of goods or other specimens bearing the trademark. You will need to submit one specimen per class of goods or services you use the trademark on. You may need to show more if the USPTO conducts an audit on your file.
In general, if you do not continue using the registered trademark in interstate businesses, you may be unable to renew and/or maintain the registration. Missing the deadlines because of this can cause the trademark registration to expire or get canceled.
When Do You Have To Renew a Trademark Registration?
The USPTO has three major deadlines that trademark owners must abide by in order to keep their registrations alive.
First Renewal: The first renewal deadline falls between the fifth and sixth year after your registration date. If you registered your trademark in 2018, then your first renewal deadline needs to be completed between 2023 and 2024. For this renewal, you only need to file the Declaration of Use and/or Excusable Nonuse under Section 8.
Second Renewal: The second renewal deadline falls between the 9th and 10th year after your initial trademark registration. This renewal requires you to file combined forms for Declaration of Use under Section 8 and Application for Renewal under Section 9.
Third and Future Renewals. All subsequent registration renewals will be due every 10 years after the second trademark renewal. This means the deadlines will fall between the 19th and 20th years, the 29th and 30th years, and so on. You will need to file the same combined forms used for the second renewal.
There is also an optional deadline and maintenance form trademark owners can submit. Any time after five years of using their registered mark, trademark owners can submit a Declaration of Incontestability under Section 15. This form means you claim incontestable rights to the validity of your mark registration.
If the renewal or maintenance filing due date falls on a weekend (Saturday and Sunday) or a federal holiday, the filing could still be considered on time as long as it is done by the next business day.
What Happens if You Miss a Trademark Renewal Deadline?
If you happen to miss any of your required trademark renewal deadlines, you might still file it belatedly.
The USPTO provides a six-month grace period for filing trademark renewals or Declaration of Use. However, this comes with additional fees for late filing. If you are still unable to file for renewal by the end of the six-month grace period, the trademark registration will effectively expire or get canceled.
To prevent such occurrences, the USPTO also sends courtesy email reminders to all registered trademark owners whenever they have upcoming maintenance filing deadlines. This is why the USPTO requires up-to-date contact information from all registrants.
Since renewals can be done between the 5th and 6th years and between every 9th and 10th years succeeding, trademark owners technically have a full year for timely filing.
As such, it is best to file around the beginning of the deadline year to ensure you have enough time to renew the trademark, even if there are any problems or errors that need to be addressed.
How To Renew a Trademark Registration
Now that we’ve discussed the requirements and deadlines, we can dive into how to renew a trademark.
As of February 15, 2020, all trademark registrations and renewals are now done electronically, via the USPTO’s Trademark Electronic Application System (TEAS). This requires creating a USPTO.gov account. Paper and fax submissions are no longer accepted besides a few very rare exceptions.
Here are the steps you need to follow to ensure you maintain your registration.
Gather specimens bearing your trademark: You will need one sample per class of goods or services as proof of use of the mark. This is one of the main areas that an attorney can assist with.
File the required maintenance document: This includes submitting a signed declaration stating your intent to continue using the trademark and the specimens for each class of goods and services that bear the mark.
Submit any optional filings: This includes the Section 15 Declaration of Incontestability and Section 7 Amendment or Correction of Registration, which is only necessary if you have a class of goods or services you will no longer use the trademark on.
Pay all applicable fees: This includes late filing fees and fees for deletion of each class or services.
Wait for the USPTO Notice: Depending on what forms you filed, the USPTO will send a Notice of Acceptance, Notice of Renewal, or Notice of Acknowledgement (or a combination of the three) around one to two months after your filing. If you filed a Section 7 form requesting for registration amendment, the USPTO will also send an updated registration certificate reflecting the requested changes.
The USPTO recommends checking the status of the registration to ensure all forms and documents were received in order to minimize renewal deadlines passing due to incomplete requirements.
Trademark Registration Renewal Fees
Take note that trademark renewal fees differ from the amount you paid during the initial trademark registration. The fees also differ based on the renewal deadline or type of maintenance form(s) submitted.
As of 2023, the renewal fees — if filed before the grace period — are as follows:
$225 per class of goods or services for renewals after the first five years; filed with the Section 8 Declaration of Use and/or Excusable Nonuse form
$425 per class of goods or services for renewals after the first five years; filed with the Combined Section 8 and Section 15 form
$525 per class of goods or services for the second renewal between the ninth and 10th years, as well as the succeeding 10 years
$200 per class of goods or services when filing the optional Section 15 declaration after five years of trademark use
All payments can be made through TEAS. The system accepts various modes of online payment, including USPTO deposit accounts, electronic funds transfers, and major credit cards like VISA®, MasterCard®, and American Express®.
Get Legal Assistance To Keep Your Trademark Registration Alive
The trademark renewal process might seem straightforward when written down, but going through the process itself — and ensuring you have all the necessary requirements to complete the filing — can complicate the process.
If you need assistance to ensure your trademark registrations don’t expire or get canceled, we are here to help!
Having a licensed attorney assisting you throughout all the steps for renewal could help you avoid mistakes in filing, missed deadlines, and expensive fines. Moreover, legal guidance is invaluable if you want to register your trademark internationally based on the Madrid Protocol.
Melissa Ramnauth, Esq., is an experienced trademark and business attorney who can help you with your trademark renewal requirements and needs. Call us at (754) 800-4481 today or book online to schedule a consultation.
References:
https://www.uspto.gov/trademarks/trademark-fee-information
https://www.uspto.gov/trademarks/basics/maintaining-registration
https://www.uspto.gov/trademarks/maintain/keeping-your-registration-alive#Common-mistakes-to-avoid
https://www.uspto.gov/trademarks/basics/trademark-process#step3
https://www.uspto.gov/trademarks/laws/mandatory-electronic-filing