Don’t Let Your Trademark Registration Expire: Why, When, and How to Renew
You’ve heeded our warning and trademarked your IP, so you’re good now, right? Well … we wish we could say that’s it and you’re done, but is that how anything works? Unfortunately, it’s not. Read on to learn why it’s super important to maintain your trademark registration and how to do so, and then bookmark this blog for when you need to refer to it in a few years!
A trademark is a valuable asset that protects your business from having to compete with another business that has the same name or a name that’s similar enough to cause confusion. It also helps protect your proprietary designs and logos or the names of your products and services.
Trademarks are a proactive investment in your brand. They safeguard your brand’s identity and reputation by making it illegal for someone else to infringe or misuse your IP. So, if you have a trademark, you get a golden star! But don’t forget that trademarks expire. To continue to protect and safeguard your brand, you must renew your trademarks.
We’ve put together this guide to make it as simple as possible to understand why and how to keep your trademark registration up to date.
Renewal Periods + Actions Required
In the U.S., renewal periods typically occur between 5-6 years after your initial trademark registration date, 9-10 years after your initial trademark registration date, and then every 10 years after that.
According to the USPTO, within the time periods outlined below, you must take the following actions to keep your trademark registration alive (with links 😘):
➡️When: Between the fifth and sixth years after your registration date
✅Action: File a Declaration of Use and/or Excusable Nonuse under section 8 (bare minimum)
✅Action: File a Declaration of Incontestability under section 15 (if your trademark is on the Principal register and not the Supplemental Register)
You can file a combined declaration for both section 8 and 15 together, and the benefit of filing the additional section 15 declaration as opposed to just the required section 8 declaration is that your trademark becomes incontestable in some ways to potential future challengers.
➡️When: Between the ninth and 10th years after the registration date
➡️When: Every 10 years after that—so between the 19th and 20th years, 29th and 30th years, and so on
The USPTO sends out email reminders when you’re due for a maintenance filing, but it’s best not to rely on those completely. Set a reminder in your phone for the next time you’re up for maintenance, just in case, and then after you complete that paperwork, set another reminder for the next time.
Renewal Fees: What They Are + Why They Exist
In addition to submitting the appropriate forms within the appropriate timeframes, you must also pay renewal fees to renew your trademark registration(s). Renewal fees vary depending on the number of classes your trademark covers. It’s best to plan for these essential expenses in your business budget so it doesn’t come as a shock when it’s time to renew.
The USPTO provides a comprehensive outline of its post-registration fees here, but here are the most important ones to know about when you’re filing online:
🤑 Section 8 registration renewal application fee per class: $225
🤑 Combined section 8 and 15 registration renewal application fee per class: $425
🤑 Combined section 8 and 9 registration renewal application fee per class: $525
The idea behind the renewal fee is to ensure registrations are kept up to date. The USPTO’s official trademark register keeps the public informed about registered marks, and it’s vital that its records are accurate.
Do You Need a Lawyer to Renew Your Trademark?
No—even if you hired a lawyer to register your trademark initially, you don’t necessarily need one to renew it for you. However, it is very important to get it right to avoid additional fees and to ensure you don’t lose your registration.
If you do hire a trademark attorney, you can rest assured that your renewal application is correctly prepared and filed. He or she can also verify that the specimen (the sample of your mark as used in commerce) meets the USPTO’s requirements.
If you would like to renew your trademark(s) yourself, we’ve linked to the appropriate forms above. If you want the help of someone who does this for a living, it’s not as expensive as you might think. Most attorneys charge for 1-2 hours of their time in addition to the filing fees.
Consequences of Missing Deadlines
The USPTO offers a six-month grace period after each of the deadlines outlined above. However, if you wait to file until you’re within the grace period, it’ll cost you extra. If you miss the deadline and the grace period, your registration will expire.
In addition to other potential fees, here are the main ones to be aware about if you miss a deadline for renewal:
🤑 Section 8 renewal application grace period fee, per class: $100
🤑 Combined section 8 and 15 renewal application grace period fee, per class: $525
🤑 Combined section 8 and 9 renewal application grace period fee, per class: $725
Instead of relying on the USPTO’s grace period or waiting until the last minute, we recommend filing early, at the beginning of each renewal period. This will give you time to handle any potential issues, if they pop up.
Take Care of Any Changes During Renewal
Your business will evolve over time, and the USPTO recognizes this. Trademark renewals are the perfect time to update the USPTO on any changes that may have occurred since your initial registration (or since your last renewal).
For instance, you may need to make changes to the classes of goods and services you’re registered for by deleting classes that are no longer in use and/or filing applications for new classes not included in the original filing. This is also the time to ensure that the registration owner’s information is still up to date (address, etc.). Additional fees may apply, depending on the changes you make during renewal.
If you were hoping to be done with the USPTO after you registered your trademark(s), we’re sorry to disappoint you. However, the renewal process is important to keep the official trademark register clean and helpful for all.
Your trademark is a valuable business asset, and it’s worth the investment to maintain. As always, if these processes still feel overwhelming, you can always hire professional legal help. Time to go set some reminders!
Need some trademark help (or trademark renewal help)? We’ve got you. Book a consultation today!