You registered a trademark. Now what?
Congratulations! Your registration with the United States Patent and Trademark Office was approved and you are now the proud owner of a registered trademark. Is that the end of the story?
Unfortunately, it is not. Among other requirements such as policing your mark, the USPTO requires renewals to be filed between the 5th and 6th year of registration and again between the 9th and 10th year of registration to keep your trademark valid and enforceable.
The first registration period, the one occurring between the 5th and 6th year of registration, is when you have to file a Section 8 Declaration of Use (or “excusable non-use,” but you’re going to be using it, right?). As the name implies, this filing tells the USPTO that the trademark is actually being used in commerce to signify the origin and quality of your goods or services. Basically, the USPTO wants to know you are still using your trademark and what you are using it for, or that you have a legally-recognized reason for not currently using it but still intend to use it. At this time you may also be eligible to file a Section 15 Declaration of Incontestability. Your trademark has to have been registered on the Principal Register and meet some other requirements, but once a trademark becomes incontestable, certain aspects of it can no longer be challenged (including the validity of the trademark itself).
You have one year to make these required filings (that’s the part about “between the 5th and 6th year”) without paying a penalty. If you haven’t made your required filing by the end of this period, the USPTO will grant you a 6 month grace period — but you’ll pay a penalty to use the grace period. After that, the USPTO will consider your mark abandoned and cancel it.
The second registration period occurs between the 9th and 10th years of your registration. It actually occurs every 9th and 10th year thereafter (meaning between the 19th and 20th year, and again between the 29th and 30th year, etc.). During these 10-year renewal periods, the USPTO requires you to file a joint Section 8 and 9 filing. The Section 8 filing is the same one you were required to file during the window between your 5th and 6th year we talked about earlier. The Section 9 filing is simply an application for renewal, which has to be done every ten years. Once again, the USPTO will offer you a 6-month grace period if you miss the filing window, and once again they will charge you penalty fees if you need to use the grace period. And if you haven’t made the required filings by the end of the grace period (and paid the penalty fees in addition to the normal fees), the USPTO will consider your mark abandoned and cancel it.
Henry Law Firm can help you meet your requirements whether we originally helped you obtain your trademark registration or not. Please call or email if you would like to speak with an experienced intellectual property professional.