Trademark renewal

A trademark registration is  normally valid for 10 years subject to the requirements of the statue.

Section 8 Declaration

A Section 8 Declaration is a statement made to the USPTO confirms that a person’s federally registered trademark has been used incessantly for a five-year period. If the individual fails to file within the required period, the registration will be lost. For a while between a federal trademark registration’s fifth and sixth anniversaries, the trademark owner must file the Declaration of Use of a mark stating the mark’s continued use (or an account regarding the particular situation for any nonuse period). The declaration must be filed amid trademark renewal. The criteria for the declaration are established in Section 8 of the Lanham Act (15 U.S. Code, Section 1058). The official fee must be included along with a specimen of the mark as it is presently used for every category of goods or services. Instead of the specimen, the trademark owner might list information regarding the sales or advertising, which establishes that the mark is in use. If the owner is unsuccessful in opportunely filing the Section 8 Declaration, federal registration will be revoked. If the individual misses the filing period, he or she can still file the Section 8Declaration within six months following the six-year anniversary date for an extra $100 fee. This is known as the grace period.Therefore, renewal papers may be filed between six and six and a half years after the date that the trademark registration was granted, provided that the grace period fee (the extra $100) is paid to the USPTO. If a person misses the filing dates, in order to recover federal trademark rights, he or she must file a new application. The individual must understand that having the mark canceled does not end his or her trademark. It is still safeguarded under common law and state law rules. The person only loses the federal registration benefits. If the mark has been given to a new owner since registration, the Section 8 Declaration is filed by the present owner, and the change in ownership should be indicated by the present owner filing a copy of the assignment with the USPTO. When the Section 8 Declaration is filed initially (between the fifth and sixth registration years), it is typically merged with a Section 15 Declaration, which claims the "incontestable" rights in the mark for the goods/services specified and serves as the 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


Section 9 Form  - Renewal application


A person also renews his or her trademark registration by filing a Section 9 form. The USPTO requires trademark owners to do this in order to preserve their trademark rights.  If an individual has had his or her trademark for nine years, then he or she has one year following that nine-year anniversary to file a renewal. After the initial renewal, renewals are necessary every ten years. Every renewal should be filed as Combined Section 8Declaration/Section 9 Renewal. Before filing the renewal papers, the following issues must be dealt with:

  • Resolving any changes in the owner’s name
  • Revising the owner’s address if it had changed
  • (If required) obtaining a new Power of Attorney and/or Domestic Representative ready
  • Discerning whether every trademark class and/or all of their goods/services are still usable and there have been five years of restricted and uninterrupted use of the mark with the goods/services