Trademark maintenance and renewal: keeping your registration alive

The maintenance calendar at a glance

Fees are those on the USPTO fee schedule at the date this guide was checked, and they change from time to time. The USPTO's maintenance page has the current figures and deadlines, and a registration's own dates are shown in its TSDR record. Trademarky's flat fee covers the application; USPTO maintenance fees are paid separately when they fall due, and we send reminders ahead of each one.

Section 8: the declaration of continued use

Between the fifth and sixth anniversaries of the registration date you must file a Section 8 declaration: a sworn statement that the mark is in use in commerce for the goods and services listed, with a specimen for each class. If some goods are no longer sold under the mark, they must be deleted from the registration. Non-use can be excused only in narrow circumstances outside your control, such as a trade embargo; a business decision to pause a product line does not count.

The window opens on the fifth anniversary and closes on the sixth. A six-month grace period follows, during which the filing is accepted with a surcharge. The USPTO sends a courtesy email reminder to the address it has on file, but the deadline stands whether or not the reminder arrives, and email addresses that were current at filing often are not five years later.

The purpose is to clear the register of marks no longer in use. Registrations with no Section 8 on file are cancelled automatically, which is why an older mark that seems to block your name is worth checking: a share of them are about to fall away.

Section 15: incontestability

A Section 15 declaration is optional. It can be filed once the mark has been in continuous use for five consecutive years after registration on the Principal Register, provided no court or USPTO proceeding about your rights is pending or has gone against you. It is almost always combined with the first Section 8 filing, with its own fee of $250 per class.

The effect is significant. An incontestable registration is conclusive evidence of the validity of the mark, of your ownership and of your exclusive right to use it for the listed goods and services. It can no longer be attacked as merely descriptive or on the ground that someone else used a similar mark before you, which removes two of the most common defenses in a dispute. Some grounds remain open, including that the mark has become generic, has been abandoned, or was obtained by fraud.

Section 9: renewal every ten years

Between the ninth and tenth anniversaries of registration you file a combined Section 8 and Section 9 form. The Section 9 part renews the registration for another ten years; the Section 8 part again confirms use with a specimen for each class. Each carries its own fee of $325 per class, and each has the same six-month grace period with a surcharge.

The cycle then repeats: years 19 to 20, years 29 to 30, and so on for as long as the mark stays in use. There is no limit on the number of renewals. A registration can only shrink at renewal, never grow: goods no longer in use are deleted, and new goods need a new application.

What happens if you miss a deadline

Once the grace period ends, a registration with no Section 8 on file is cancelled, and one with no Section 9 expires. The deadlines are set by statute, so the USPTO cannot extend them. A petition succeeds only where the USPTO itself made an error, for example by misplacing a filing that was made on time.

Losing the registration means losing the presumption of ownership, the nationwide priority that dated back to your original filing, the right to use the ® symbol, and the standing the registration gave you with marketplaces and customs. Any rights you keep are common-law rights, limited to the places where you actually use the mark. The only way back onto the register is a new application, with a new filing date and a fresh examination against every mark filed in the meantime. Our guide on what a trademark costs covers that fee.

Keeping your use consistent

• Use the mark as registered. A word mark in standard characters tolerates a new font or color. A registered logo does not: if you redesign it, the old registration no longer matches what you use, and the new design needs its own application. Read word mark vs logo vs icon mark before you rebrand.
• Keep the goods in use. Every good and service in the registration must still be sold under the mark at each maintenance filing. Prune what you have dropped rather than declare use you cannot prove.
• Keep dated records: photographs of products and packaging, screenshots with the URL and date, invoices. You will need specimens at every filing and in any audit.
• Mark it correctly: ® only after registration and only for the registered goods, ™ for everything else.
• Control how others use it. If you license the mark, keep quality control over the licensed goods; an uncontrolled license can be treated as abandonment.
• Tell the USPTO when you move, change email address, change your entity's name or transfer the mark. Ownership changes should be recorded so the registration stays in the right name.

Three consecutive years of non-use is presumed to be abandonment under the Trademark Act, and a competitor can rely on that presumption to cancel the registration.

Audits, monitoring and enforcement

Since 2017 the USPTO has randomly audited a share of Section 8 filings that list several goods or services in a class. An audit is an office action asking for proof of use on specific additional goods. If you cannot show it, those goods must be deleted, and deleting goods after an audit has begun carries a USPTO fee per class. Failing to respond at all cancels the entire registration. The program is described on the USPTO's post-registration audit page. Since 2021, anyone can also ask the USPTO to expunge or re-examine a registration for goods that were never used, or were not in use when use was claimed.

Maintenance keeps the registration alive; it does not enforce it. Watch the USPTO's weekly Official Gazette, or use a watch service, for new applications close to your mark, because the window to oppose one is 30 days after publication. Check marketplaces and domain registrations periodically. A registered mark that is never enforced still exists, but every similar mark you let stand makes yours a little narrower.

Not sure when your next deadline falls, or whether your current use still matches the registration? Your attorney can check the record with you on a free call. Book a free attorney call

Questions about this topic

What happens if I miss the Section 8 deadline?

You have a six-month grace period in which the filing is accepted with a surcharge per class. After that the registration is cancelled and cannot be revived; the only route back is a new application with a new filing date.

What does incontestability actually give me?

After five years of continuous use you can file a Section 15 declaration. The registration then becomes conclusive evidence of validity, ownership and your exclusive right to use the mark, and it can no longer be challenged as merely descriptive or on the basis of another party's earlier use. It can still be attacked for genericness, abandonment or fraud.

Will the USPTO remind me when maintenance is due?

It sends a courtesy email to the address on file, but the deadline does not depend on it, and owners who moved or changed email address commonly never see it. Trademarky sends reminders ahead of each deadline for the marks it filed, and any owner can check the dates in the registration's TSDR record.

Related guides

• Trademark specimens: what the USPTO accepts and what it refuses: What a trademark specimen is, the difference between specimens for goods and services, examples the USPTO accepts and refuses, and how to prepare one.
• How much does a trademark cost?: What a U.S. trademark costs: the $350 USPTO fee per class, attorney fees, the later filings that keep a registration alive, and what is refundable.
• Word mark vs logo vs icon mark: Word marks, logos and icon marks explained: what each protects, which to file first, why a brand set is several applications, and when to claim color.

Contact

Trademarky, LLC, 78 SW 7th St, 5th FL, Miami, FL 33130. (305) 562-6800, hello@trademarky.io. Monday to Friday, 9am to 5pm ET. Available by appointment.

This free check is an AI-assisted preliminary screening against known U.S. trademark records. It is not a comprehensive clearance search and not legal advice. Only a licensed attorney can advise you on whether to file.