TRADEMARK LEARNING CENTER - by TRADEMARKS ON CALL®

Provided by Trademarks On Call®, the Trademark Learning Center is for informational purposes only, not legal advice. Select a topic below to learn more about trademarks:

Trademarks | Office Actions | Notices of Allowance | Statements of Use

Trademark Renewals | Abandoned Applications | Cancelled Trademarks

TRADEMARK RENEWALS

As the owner of a trademark registration, you are responsible for the renewal and maintenance of your registrations. The U.S. Patent and Trademark Office (USPTO) requires that you periodically renew your trademark. The goods news is that your trademark registration may continue indefinitely provided you submit the proper filings on time. The bad news is that if you fail to file your renewal prior to a deadline, the USPTO will cancel your trademark registration.

Your first trademark renewal comes due 5 years after your trademark registers. Additional trademark renewals are due every 10 years after your trademark registers. To better understand your renewal requirements and deadlines, you may want to consult with a licensed trademark attorney.

5 YEAR RENEWAL - SECTIONS 8 AND 15

Section 8 Declaration: Between the 5th and 6th years following the registration date of your trademark, a trademark owner must file a Section 8 Declaration with the UPSTO. A Section 8 Declaration is a statement confirming that your trademark has been in continuous use for five years. However, if you have not continuously used your trademark during the prior 5 years, you may file a Declaration of Excusable Nonuse as the USPTO considers certain types of nonuse - e.g., fire, retooling, illness, natural disasters, and other damages - provided the nonuse is temporary. Filing a Section 8 Declaration or a Declaration of Nonuse will keep a trademark registration alive until the next renewal deadline at the 10-year anniversary of your trademark registration.

Section 15 Declaration: If your trademark is registered on the Principal Register, your should also consider filing a Section 15 Declaration of Incontestability. Although filing a Section 15 Declaration is optional, the filing makes your registration incontestable, thereby making it much more difficult for a third party to cancel or otherwise challenge your trademark. A Section 15 Declaration is typically filed in combination with a Section 8 Declaration prior to the first renewal deadline. You may file a Section 15 Declaration when:

• the trademark has been in continuous use in commerce for a period of five years after registration


• no final legal decision has issued regarding your ownership of the trademark or right to register the trademark.


• there is no pending challenge to the trademark.


• the trademark has not become generic.

10 YEAR RENEWAL - SECTIONS 8 AND 9

Your trademark registration must also be renewed every 10 years. Between the 9th and 10th years following your registration date, you must file a renewal application which includes a Section 8 Declaration (discussed above) and Section 9 renewal application.

In addition, after renewing your trademark registration at the 10-year anniversary, your trademark must again be renewed every 10 years thereafter.

Disclaimer: Trademarks On Call is not a law firm or a substitute for an attorney or a law firm. Trademarks On Call does not provide legal advice. The information provided on this website is for informational purposes only and does not constitute legal advice.