What Are the Trademark Registration Renewal Requirements?

You did the hard work of creating a product or service. You developed a brand after extensive research for your target market and you worked with trademark attorney to help you determine if your will be able to register your trademark. Then you filed your trademark application with all of the necessary attachments on USPTO.gov and you were granted the trademark. Now you can reap the benefits of all your hard work. But please keep in mind that trademark registrations come with renewal requirements, meaning you will have to perform some maintenance on your trademark registration. 

The United States Patent and Trademark Office (USPTO) established a trademark renewal procedure that involve specific timelines, deadlines and documentation requirements to ensure that your trademark remains valid over time.

USPTO Trademark Renewal Process

You must file trademark renewal documents with the USPTO between the 5th and 6th year after registration and then every 10 years after registration to maintain your trademark. If you do not file the trademark renewal documents after the 6th year of a trademark being registered, it will expire. During the 5th and 6th year you will submit a Declaration of Use and/or Excusable Nonuse. Then during the 10th year you will file Trademark Renewable documents combined with a Declaration of Use & Application for Renewal. 

Why should you renew your trademark? Because a USPTO trademark renewal maintains your legal remedies if a third party commits trademark infringement. Failure to timely file the documents below will result in cancellation or expiration of your trademark registration. There are no guarantees that the USPTO examining trademark attorney will grant a new registration for the cancelled or expired trademark.

1. If you have continuously used a mark registered on the Principal Register in commerce for five consecutive years after the date of registration you may: 

1. File a Combined Declaration of Use and Incontestability under Sections 8 and 15. This must include:

1. Combined Declaration

2. Specimen, and

3. Fee on a date that falls on or between the fifth and sixth anniversaries of the registration 

1. For an extra fee of $100 per class, you may file within the six-month grace period following the sixth anniversary date.

1. If you have NOT continuously used a mark registered on the Principal Register in commerce for five consecutive years after the date of registration you may file:

1. Declaration of Use and Incontestability under Sections 8 

2. Specimen, and

3. Fee on a date that falls on or between the ninth and tenth anniversaries of the registration, and each successive 10-year period thereafter

1. For an extra fee of $100 per class, you may file within the six-month grace period.

1. Renewal every 10 years after registration you must file:

1. A combined Section 8 Declaration & Section 9 renewal application

2. Specimen, and

3. Fee on a date that falls on or between the ninth and tenth anniversaries of the registration, and each successive 10-year period thereafter

1. For an extra fee of $100 per class, you may file within the six-month grace period.

1. If you want to claim that your mark registered on the Principal Register is incontestable you must:  

1. File a Declaration of Incontestability of a Mark under Section 15

1. You may file this declaration within one year after the expiration of either any five-year period of continuous use in commerce following registration, or any five-year period of continuous in commerce use after publication under section 12(c) Affidavit.

2. Because of the timing you have the option of filing a combined Section 8 & Section 15 form. 

1. Surrender of Registration for Cancellation

1. If you wish voluntarily surrender your registration for cancellation you may do so:

1. In the entirety of the registration (i.e. as to all classes in the registration) under Section 7(e) of the Act; or

1. In this case, the USPTO will update its records and send a notice to the owner of record that the registration is cancelled.

2. In part of the registration (i.e.  fewer than all classes in the registration.) 

1. In this case, the automated records will be updated to indicate the specified classes that have been cancelled.

2. Note: If the registration being surrendered is the subject of a cancellation proceeding before the Trademark Trial and Appeal Board (TTAB), the TTAB will process the surrender in accordance with TBMP section 602.02(a). For all other registrations, the Post-Registration division will handle the voluntary surrender.

Trademark Renewal Fees

Here are the fees you can expect during renewal:

• A per-class fee of $225 is required for each Section 8 Declaration of Use.

• A per-class fee of $200 is required for a Section 15 trademark incontestability.

• Section 9 renewals have a per-class fee of $300. 

• Combined Section 8 and Section 9 submissions are $525 per class.

• Late fees: Renewals submitted during the six-month grace period will include additional per-class fees of $200.

Trademark renewal deadlines cannot be extended or waived. Failure to file maintenance documents prior to the six-month grace period expiration will result in an expired trademark.

If you need any assistance with filing a trademark application or any other question we are here to help.