Completing the Trademark registration process and successfully registering a trademark with the United States Patent and Trademark Office (USPTO) is a great achievement, but it’s only the beginning of protecting your brand long-term. Once your trademark is registered, you will be tasked with maintaining your trademark registration. This requires you to maintain it by filing periodic documents with the USPTO. Failing to meet these deadlines can result in the cancellation of your registration, even if you’re still using your trademark in commerce. This guide explains the key filings you need to make to keep your trademark active and enforceable. To learn more about the trademark registration process, we have another article.
1. Section 8 Declaration of Use (Due Between Years 5 and 6)
The first required maintenance filing is the Section 8 Declaration of Use, which confirms that you are still using your trademark in commerce. It must be filed between the 5th and 6th year after the registration date. You’ll need to provide a sworn statement of continued use and submit specimens of use showing how the mark is used in connection with the registered goods or services. Ensuring you comply with these requirements is essential for maintaining your trademark registration.
2. Optional Section 15 Declaration of Incontestability (Also Between Years 5 and 6)
You may also choose to file a Section 15 Declaration of Incontestability at the same time as your Section 8 filing. This is not mandatory, but it strengthens your trademark rights by making the registration less vulnerable to legal challenges. To qualify, your trademark must have been in continuous use for five years and meet other criteria set by the USPTO. This step is an important part of maintaining registration.
3. Combined Section 8 and 9 Filing (Due Between Years 9 and 10)
To keep your trademark registration active after 10 years, you must file a combined Section 8 Declaration of Use and Section 9 Renewal Application. This filing confirms continued use and formally renews your trademark registration for another 10-year term. It must be filed between the 9th and 10th anniversary of your registration date. A grace period of six months is available, but late fees apply. These filings are crucial for maintaining your trademark registration in every decade.
4. Every 10 Years After That: Section 8 and 9 Combined Renewal
After the initial 10-year mark, you’ll need to file another combined Section 8 and 9 renewal every 10 years for as long as you continue using the trademark. If you miss a filing or fail to respond to a USPTO notice, your registration will be canceled. This regular filing helps maintain the trademark registration effectively over time.
5. Best Practices for Maintaining Your Trademark Registration
- Keep track of your trademark registration and renewal deadlines in a secure calendar to ensure you never miss a step in maintaining the registration.
- Use your trademark consistently in commerce and keep records of how it appears on your products, packaging, website, and marketing materials.
- Work with a trademark attorney to handle all filings and avoid common errors or delays.
- Don’t wait until the last minute—start preparing documentation months before your deadline.
Maintaining your trademark registration is essential to protecting your brand and preserving your legal rights. Missing a deadline can result in the loss of your trademark, opening the door to potential infringement and loss of exclusivity. If you’re unsure about your trademark status or upcoming deadlines, speak with a qualified trademark attorney to ensure your brand stays protected.
Have questions about maintaining your trademark registration?
Contact Stemer Law | hello@stemerlaw.com | (303) 928-1094 | Based in Colorado | Serving clients nationwide and internationally
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