Trademark Renewal Filings
Like most IP protection, trademark registration does not last forever. In order to ensure continued protection and ownership in your mark, you must be sure to comply with renewal and maintenance requirements set forth by the USPTO. If a trademark is not renewed within the required periods, it will be abandoned by the USPTO.
Every Trademark requires an initial renewal of the mark between the 5th and 6th years after registration to ensure the mark is still being used in commerce by the owner of the mark. The USPTO will require proof that the trademark is still being used in commerce for the goods and services originally filed. This is generally called the Section 8 Declaration of Use.
The second renewal is due 9 to 10 years after the registration date.
What is a Section 8 and 15 Filing?
The renewal window for an 8&15 opens on the five-year anniversary of the date of your trademark registration.
After 5 years of registration, the USPTO will require you file a combined Section 8 & 15 Declaration. A Section 8 Declaration is a statement of use filed with the USPTO demonstrating your mark has continuously been used for a period of five years. Failure to file a timely Section 8 will result in cancellation of your mark by the USPTO. At the same time you file a Section 8 you will also be asked to file a combined Section 15 Declaration. A Section 15 Declaration is a sworn declaration that requests the trademark owner indicate there are no pending proceedings involving the mark and have been no court decisions affecting ownership of the mark. A Section 15 Declaration causes the trademark to become incontestable which denies adverse litigants the ability to challenge your trademark registration.
A trademark owner has one year from the date of the five-year anniversary of your mark to submit an 8&15 filing with the USPTO. Noting this time frame is extremely important for a trademark owner. If window is missed, your trademark will be automatically abandoned.
Filing of an 8&15 requires a specimen of use to be filed showing your goods or services in use in commerce.
We are happy to assist you in meeting your renewal requirements and deadlines with the USPTO to ensure you receive continued protection of your mark. To learn more about filing an 8&15 contact us today! Click here if you would like a licensed attorney to start your 8&15 filing now.
What is a Section 8&9 Filing?
The next renewal and maintenance filing with the USPTO occurs between the 9th and 10th anniversary of your trademark registration. Otherwise, your trademark will automatically expire after 10 years. This filing is called a combined Section 8&9 filing.
Section 8&9 filing requires a declaration of statement of use as well as an application to renew the trademark registration. A Section 9 is the opportunity to renew the trademark with the USPTO. The Section 8 portion of the statement is a sworn statement by the owner of the mark that the trademark has been used continuously for the past 10 years. Like your 8&15 filing, a specimen of use is required to be filed with your Section 8&9 renewal.
A successful filing of the 8&9 renewal protects your mark for an additional 10 years. Contact us today to learn more. Click here if you would like us to start on your 8&9 filing today!
We are happy to assist you in meeting your renewal requirements and deadlines with the USPTO.