CopyMark Law Group

Copymark

Trademark Renewals

You’ve probably invested a lot of time and money into getting a trademark registration, so don’t forget to take the actions necessary to protect your valuable asset.
You’ve probably invested a lot of time and money into getting a trademark registration, so don’t forget to take the actions necessary to protect your valuable asset. Trademark rights can last forever, but in order to keep your federal trademark registration, you must continue to use the mark in commerce and file the required maintenance documents at regular intervals.
The first maintenance document must be filed between the 5th and 6th years after registration and the remaining documents must be filed between the 9th and 10th years after registration, and then every 10 years thereafter.

Deadlines

Failure to file these documents will result in the cancellation, or loss, of your federal registration. The due dates of your post-registration maintenance documents are calculated from the trademark’s registration date. If you miss both the deadline and the grace period, you’re out of luck. Your registration will expire or be cancelled and there is no opportunity to revive the registration. At that point, you will have to start all over again and file a brand new application.

Section 8 Declaration

The document due between the 5th and 6th year after registration is the Section 8 declaration. This is a sworn statement that you are continuing to use the mark in commerce for each good or service listed in the registration, and it must include a specimen of use and a filing fee.

Section 8 & 9 Declaration

The document due every ten years after registration is the Combined Sections 8 & 9. As you might guess, the filing includes the Section 8 declaration and, in addition, a Section 9 request for renewal of the registration. The Section 9 filing calls for a signed request for renewal and a filing fee.

Declaration of Incontestability

An incontestable trademark registration is one that has an extra layer of protection against challenges. This filing is optional and only available to marks on the Principal Register. Once a registration becomes incontestable, another party cannot challenge the ownership of the mark or argue that the mark should not have been registered. It limits the types of challenges that may be made against a registration, reducing the likelihood of the loss of that registration. Like most legal filings, there are several criteria that must be met.