Maintain/Renew a Registration: How to Keep a Registration Alive

TIMELINES FOR MAINTAINING TRADEMARK REGISTRATIONS

WHAT ARE THE PROCESS STEPS AND TIME FRAMES FOR MAINTAINING TRADEMARK REGISTRATIONS?

• View the Post Registration Timeline for all Registrations except Madrid Protocol-Based Registrations for an overview of the process steps and time frames for maintaining a trademark registration.  After a registration issues, to keep the registration "alive" or valid, the registration owner must file specific documents and pay fees at regular intervals.  Failure to file these documents will result in the cancellation of your registration.
• View the Post-Registration Timeline for Madrid Protocol-Based Registration for an overview of the process steps and time frames for maintaining a Madrid Protocol-based registration.  After protection is granted to the international registration and a U.S. registration issues, to keep protection in the U.S., the U.S. registration owner must file specific documents and pay fees at regular intervals.  Failure to file these documents will result in the cancellation of your U.S. registration and the invalidation of protection of the international registration by the USPTO.

HOW-TO VIDEO ON POST-REGISTRATION ISSUES

WHAT ARE THE MAINTENANCE DOCUMENTS THAT MUST BE FILED TO KEEP A REGISTRATION ALIVE?

View the "Post-Registration Issues" video for an overview of the most important issues you should be aware of after your application has matured into a registration.  The video explains the required maintenance documents that you must file to keep your registration alive, as well as discusses an optional filing to enhance the legal strength of your registration.  Failure to file the required maintenance documents discussed in this video can result in the cancellation of your registration.

• WATCH VIDEO [run time: 13:28] (NOTE: If you have problems viewing video, see "NOTE" in introductory section, on the TMIN videos page.)
• Enhanced Accessibility Version of Video [run time: 15:04] (NOTE: To turn closed captioning on and off, type "Ctrl+Shift+C.")
• Printable Transcript of Video

DECLARATION OF CONTINUED USE OR EXCUSABLE NONUSE UNDER SECTION 8

WHEN MUST I FILE A §8 DECLARATION?

The owner of the registration must file a §8 Declaration during the following time periods:

1. First Filing Deadline: File a Declaration of Use (or Excusable Nonuse) between the 5th and 6th  years after the registration date.  See 15 U.S.C. § 1058.  If the declaration is accepted, the registration will continue in force for the remainder of the ten-year period from the registration date, unless cancelled by an order of the Commissioner for Trademark or a federal court.
2. Subsequent Filing Deadline: File a Declaration of Use (or Excusable Nonuse) and an Application for Renewal between the 9th and 10th years after the registration date, and between every 9th and 10th year after the registration date thereafter.  See 15 U.S.C. § 1059.

NOTE regarding Grace Period Filings: The above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee.

WHAT IS THE FILING FEE FOR FILING A §8 DECLARATION?

The current fee for filing a §8 Declaration is $100 per class of goods/services. There is an additional grace period surcharge of $100 per class of goods/services for filing during the 6-month grace period.

WHAT MUST I INCLUDE IN A §8 DECLARATION?

1. The registration number;
2. The name and address of the current owner;
3. The fee for filing the Declaration;
4. If the mark is in use: a statement that the registered mark is in use in commerce; a list of the goods/services recited in the registration on or in connection with which the mark is in use; and one specimen per class of goods/services. Examples of acceptable specimens are tags/labels for goods, and advertisements for services; and
5. A signed and dated affidavit or declaration under 37 C.F.R. §2.20.

WHO MAY SIGN A §8 DECLARATION?

The owner or a person who is properly authorized to sign on behalf of the owner may sign the §8 Declaration. That is:

1. A person with legal authority to bind the owner;
2. A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
3. An attorney as defined in 37 C.F.R. §11.1 who has actual written or verbal power of attorney or an implied power of attorney from the owner.

IS THERE A FORM FOR FILING A §8 DECLARATION?

Yes . USPTO electronic forms for filing a §8 Declaration and a combined 10-year §8 Declaration and §9 Renewal Application are available online at the USPTO website.

        >> File §8 <<

HOW WILL I KNOW IF MY §8 DECLARATION HAS BEEN ACCEPTED?

Section 8 Declarations are reviewed by trademark specialists in the Post-Registration Division. If the §8 Declaration is accepted, the USPTO will send a Notice of Acceptance. If the §8 Declaration is refused, the Office will send an Office Action stating the reasons for refusal and any remedies available.

WHAT IS A DECLARATION OF EXCUSABLE NONUSE?

A §8 Declaration of Excusable Nonuse is a sworn statement, filed by the owner of a registration, that the mark is not in use in commerce due to special circumstances that excuse such nonuse and is not due to any intention to abandon the mark. Section 8 of the Trademark Act, 15 U.S.C. 1058.

WHAT SPECIFIC TYPE OF INFORMATION MUST I INCLUDE IN A §8 DECLARATION OF EXCUSABLE NONUSE?

If the owner of the registration is claiming excusable nonuse of the mark, the §8 Declaration must include:

1. The registration number;
2. The name and address of the current owner;
3. The fee for filing the Declaration;
4. A list of the goods/services in the registration on or in connection with which the mark is not in use in commerce; the date of the last use of the mark in commerce; the approximate date when use in commerce is expected to resume; details regarding the reason for nonuse; and specific steps being taken to resume use; and
5. A signed and dated affidavit or declaration under 37 C.F.R. §2.20.

WHERE CAN I LEARN MORE ABOUT EXCUSABLE NONUSE?

The Trademark Manual of Examining Procedure (TMEP) is available online at the USPTO website.  This resource contains an explanation of excusable nonuse and examples of circumstances under which a claim of excusable nonuse has been accepted. See TMEP §1604.11.

In general, nonuse must be temporary, and the owner must clearly demonstrate how the circumstances prevent use of the mark in commerce and what efforts are being made to resume use. Please note that nonuse due to the decreased demand for a product does not by itself constitute "excusable nonuse."

IF MY §8 DECLARATION OF EXCUSABLE NONUSE IS ACCEPTED, DO I HAVE TO FILE ANOTHER §8 DECLARATION WHEN I RESUME USING THE MARK?

No. Once the USPTO accepts the §8 Declaration of Excusable Nonuse, the owner of the registration is not required to file another §8 Declaration until the next statutory filing period.

COMBINED DECLARATION OF USE AND/OR EXCUSABLE NONUSE/APPLICATION FOR RENEWAL UNDER SECTIONS 8 & 9

DOES MY REGISTRATION EVER EXPIRE?

Yes. Subject to the filing of §8 Declarations and §9 Applications for Renewal, federal trademark registrations issued on or after November 16, 1989, remain in force for 10 years, and may be renewed for 10-year periods. Trademark registrations issued or renewed prior to November 16, 1989 remain in force for 20 years, and may be renewed for 10-year periods.

HOW DO I RENEW MY TRADEMARK REGISTRATION?

To renew a federal trademark registration, you must file an Application for Renewal under §9 of the Trademark Act, 15 U.S.C. §1059 in conjunction with a §8 Declaration.  See the answer below.

IS THERE A SPECIFIC TIME PERIOD FOR FILING A §9 RENEWAL APPLICATION?

Because the time period for filing the 10-year §8 Declaration coincides with the filing of a §9 Renewal Application, the USPTO created a form entitled "Combined Declaration of Use in Commerce & Application for Renewal of Registration of a Mark Under Sections 8 & 9" ("combined form"). As noted above, the filing of timely §8 Declarations are required to avoid the cancellation of a registration.

IS THERE A FORM FOR FILING A COMBINED §8 DECLARATION AND §9 RENEWAL APPLICATION?

Yes.   USPTO electronic forms for filing a combined §8 declaration and §9 renewal application are available online at the USPTO website.  

        >> File combined §8 & §9 <<

IS THERE A FEE FOR FILING AND APPLICATION FOR RENEWAL?

Yes. The current fee for filing a §9 Renewal is $400 per class of goods/services, and the filing fee for a Combined Section 8 Declaration and Section 9 Renewal Application is $500 per class. There is an additional surcharge of $100 per class for filing a Section 9 Renewal Application within the 6-month grace period, or $200 per class for filing a Combined Section 8 Declaration and Section 9 Renewal Application during the grace period.

WHAT MUST I INCLUDE IN A §9 RENEWAL APPLICATION?

A §9 Renewal Application must include:

1. A request to renew the registration signed by the registrant or the registrant's representative;
2. The registration number, mark and date of registration.
3. A name and address for correspondence; and
4. The filing fee.

HOW WILL I KNOW IF MY §9 RENEWAL HAS BEEN ACCEPTED?

Section 9 Renewal Applications are reviewed by trademark specialists in the Post-Registration Division. If the §9 Renewal Application is accepted, the USPTO will issue a notice granting the renewal. If the §9 Renewal is refused, the USPTO will send an Office Action stating the reasons for refusal and any remedies available.

DECLARATION OF INCONTESTABILITY OF A MARK UNDER SECTION 15

WHAT IS A §15 DECLARATION?

A §15 Declaration is a sworn statement, filed by the owner of a mark registered on the Principal Register, claiming "incontestable" rights in the mark for the goods/services specified. Marks registered on the Supplemental Register are not eligible for claims of incontestable rights under §15.

WHAT IS AN "INCONTESTABLE" REGISTRATION?

An "incontestable" registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner's ownership of the mark and of the owner's exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 1115(b). 

AM I REQUIRED TO FILE A §15 DECLARATION?

No. The filing of a §15 Declaration is optional. An owner may choose to claim the benefits of incontestability by filing a §15 Declaration or may elect to retain the registration without those benefits. The term of the registration, for purpose of renewal, is not affected in either event.

IS THERE A PARTICULAR TIME PERIOD FOR FILING A §15 DECLARATION?

Yes. A §15 Declaration may not be filed until the mark has been in continuous use in commerce for at least five consecutive years subsequent to the date of registration for marks registered under the Act of 1946 (and subsequent to the date of publication under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), for marks registered under the Acts of 1905 and 1881 for which the benefits of the Act of 1946 have been claimed). The §15 Declaration must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce.

IS THERE A FEE FOR FILING A §15 DECLARATION?

Yes. The current fee for filing a §15 Declaration is $200 per class of goods/services, and the filing fee for a Sections 8 & 15 Combined Declaration is $300 per class.

WHAT MUST I INCLUDE IN A §15 DECLARATION?

A §15 Declaration must include:

1. The registration number and the date of registration;
   
2. The fee for each class of goods/services in the registration to which the Declaration pertains;
   

3. A statement that:

   (a)  the mark has been in continuous use in commerce for a period of five years subsequent to the date of registration, or the date of publication under 15 U.S.C. §1062(c), on or in connection with the goods/services recited in the registration and is still in use in commerce;

   (b)  there has been no final decision adverse to the owner's claim of ownership of the mark for the goods/services, or to the owner's right to register the mark or to keep the same on the register; and

   (c)   there is no proceeding involving the claimed rights pending in the USPTO or in a court of law and not finally disposed of; and

4. A signed and dated affidavit or declaration under 37 C.F.R. §2.20.

WHO MAY SIGN A §15 DECLARATION?

A person who is properly authorized to sign on behalf of the owner may sign the §15 Declaration. That is:

1. A person with legal authority to bind the owner;
2. A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the owner; or
3. An attorney as defined in 37 C.F.R. §11.1 who has actual written or verbal power of attorney or an implied power of attorney from the owner.

IS THERE A FORM FOR FILING A §15 DECLARATION?

Yes. USPTO electronic forms for filing a §15 Declaration and a combined §§ 8 &15 Declaration are available online at the USPTO website.  Currently, there is not an electronic form for filing a combined §15 and §71 Declaration.  These forms may be filed separately in accordance with the specific requirements of each.        

     >> File §15 or combined §8 & §15 <<

The USPTO neither examines the merits of §15 Declarations nor "accepts" §15 Declarations. However, the USPTO will review a §15 Declaration to determine whether it complies with statutory requirements. The USPTO will acknowledge receipt of only those §15 Declarations that meet all statutory requirements.  §15 Declarations for registrations issued under Section 69, 15 U.S.C. §1141i, may only be filed in accordance with the specific time requirements outlined in Section 73.  15 U.S.C. §1141m.  Section 73 itself does not require a separate filing, but rather only establishes the time for filing.  The §15 Declaration form may be used regardless of the original basis for registration.

DECLARATION OF CONTINUED USE OR EXCUSABLE NONUSE UNDER SECTION 71 FOR MADRID PROTOCOL REGISTRANTS

WHAT IS A §71 DECLARATION OF CONTINUED USE?

Holders (owners) of registered extensions of protection to the U.S. (also called §66(a) registrations, registrations resulting from 79’ series applications, international registrations extended to the U.S.) who wish to maintain the protection granted their mark in the U.S. pursuant to the Madrid Protocol must file an affidavit or declaration of use in commerce or excusable nonuse to avoid cancellation of protection in U.S. Such affidavits are required pursuant to Section 71, 15 U.S.C. §1141k, of the Trademark Act.  The USPTO has no authority to waive or extend the deadline for filing a proper §71 Declaration.  Registrations cancelled due to the failure to file a §71 Declaration cannot be reinstated or "revived."  A new application to pursue registration of the mark again must be filed.  

IS THERE A FORM FOR FILING A §71 DECLARATION?

Yes. USPTO electronic forms for filing a §71 Declaration are available online at the USPTO website through Form #9 in the Registration Maintenance/Renewal Forms.

        >> File §71<<

WHEN MUST I FILE A §71 DECLARATION?

The owner of the registration must file a §71 Declaration during the following time periods:

1. First Filing Deadline: File a Declaration of Use (or Excusable Nonuse) on or after the fifth anniversary and no later than the sixth anniversary after the date of registration in the United States, or in the six-month grace period immediately following, with payment of the grace period surcharge.
2. Subsequent Filing Deadline: File a Declaration of Use (or Excusable Nonuse) within the year preceding the end of each ten-year period after the date of registration in the U.S., or in the six-month grace period immediately following, with payment of the grace period surcharge.

MUST I FILE ANY OTHER MAINTENANCE DOCUMENTS IN ADDITION TO SECTION 71 DECLARATIONS?

Yes, the holder of a registered extension of protection of an international registration to the U.S. must file an application for renewal the international registration with the International Bureau (IB).  37 C.F.R. §7.41(a). Renewal of international registrations is governed by Article 7 of the Madrid Protocol and Rules 29 - 31 of the Common Regulations under the Madrid Agreement and Protocol.

HOW DO I RENEW MY REGISTERED EXTENSION OF PROTECTION?

Requests for renewal of an international registration must be filed directly with the International Bureau (IB).  37 C.F.R. §7.41(a)   A renewal can be filed during the six months before expiry of the period of protection or in the six months following the expiry of the current period of protection with the payment of a surcharge.

The term of an international registration is ten years, and it may be renewed for ten years upon payment of the renewal fee. Articles 6(1) and 7(1). There is a renewal form available on the IB website. 

On-line renewals may be filed through the WIPO Marks E-Renewal System.

WHERE CAN I FIND ADDITIONAL INFORMATION ON MAINTENANCE REQUIREMENTS?

Please review the additional information on Madrid Protocol Maintenance Requirements.