Congratulations – you’ve successfully obtained a trademark registration from the United States Patent and Trademark Office (USPTO). Now you might be asking, how long will this trademark registration last? And what do I need to do to keep it alive?
The first bit of good news is that trademark registrations can last forever. For example, COCA-COLA has been a registered trademark for “BEVERAGES AND SYRUPS FOR THE MANUFACTURE OF SUCH BEVERAGES” since January 31, 1928, and they’re still going strong.
However, you will need to renew your trademark registration periodically. Here are the deadlines and filings that you need to be aware of:
Declaration of Use and/or Excusable Nonuse (Section 8)
This filing is first due between the 5th and 6th years after the registration date. So if your registration date is January 1, 2022, this filing will be due between January 1, 2027 and December 31, 2027.
The purpose of this filing is simply to let the USPTO know that you are still continuing to use the mark in interstate commerce. If you are not using the mark in commerce, there are a few circumstances where you can claim “Excusable Nonuse” and maintain the registration. For example, if your trademark registration is for live, in-person events, and you were not able to continue those events for some period of time due to COVID, but you have a bona fide intent to resume the events in the near future, you may be able to claim Excusable Nonuse. But the vast majority of these filings are to show that the mark is still in use. A transaction-based intellectual property attorney can advise on the details.
The key to this filing is being able to demonstrate that the mark is actually still in use. You will need to submit a Specimen (or Specimens) of Use, just like you did when you first obtained your trademark registration.
Optional, but Recommended: Declaration of Incontestability (Section 15)
If your mark is registered on the Principal Register of Trademarks (as opposed to the Supplemental Register) and satisfied certain requirements, including at least 5 years of continuous use in interstate commerce, you can file a Declaration of Incontestability. This filing is often combined with the Section 8 Declaration of Use and/or Excusable Nonuse filing described above, and the USPTO makes it easy by offering these filings in one form (the Combined Declarations of Use and Incontestability).
Once a trademark is “incontestable”, various aspects of the registration cannot be challenged by third parties (such as the trademark’s validity). So this is almost always worth doing if your mark is eligible.
Declaration of Use and/or Excusable Nonuse and Application for Renewal (Sections 8 and 9)
This filing is first due between the ninth and 10th years after the registration date, and every 10 years after that (between the 19th and 20th years, 29th and 30th years, etc.).
So for your January 1, 2022 registration, this filing will be due between 1/1/31 and 12/31/31, and again between 1/1/41 and 12/31/41, and so on.
What Happens if I Don’t File the Renewal?
Your trademark registration will be cancelled. At that point, you may have to start over with a new trademark application.
How Will I Know When the Deadlines Come Up?
The USPTO typically sends courtesy email reminders either to the registrant or to the attorney of record on the trademark registration. So your transaction-based lawyer can help. But the filings are due even if the reminder email isn’t received, so be sure to calendar these deadlines.
Can I Wait Until the Last Day?
Sometimes people want to wait to file their renewal for budgetary or other reasons. Generally, it’s best to file as early as possible. This way, if your renewal is rejected for some reason, you’ll have time to address the issue before the deadline.
Grace Periods
The USPTO automatically grants a six-month grace period after each of the renewal deadlines. However, they do charge an additional fee for filing during the grace period, which is another reason why it’s best to file early.
Note: these deadlines apply to standard U.S. trademark registrations, not those based on the Madrid Protocol. If you’re not sure whether your registration is based on the Madrid Protocol, check the serial number on your application. Madrid Protocol filings have serial numbers that begin with “79”.
If you have any questions about how to renew and maintain your trademark registration, or if you’ve run into issues, please feel free to contact me.
