Trademark Renewal: Process, Costs, Mistakes to Avoid

What is Trademark Renewal?

Trademark renewal is the process of keeping your trademark registration active so that you protect your brand.

It’s a misconception to think that once you’ve registered your trademark, you can forget about it. This can cause you to lose the right to use it and it can damage your business reputation.

Read the rest of this article to learn about trademark renewal, its process, what mistakes to avoid, and when you should consult with a lawyer for assistance.

How Do You Complete a Trademark Renewal?

Renewing your trademark includes important steps you have to follow. Although you’ll renew your trademark every 10 years, you need to submit documents at certain times over the years to show that your trademark is still active. These form part of the process.

• In the 5th or 6th year, you must file a Declaration of Use (Section 8) to show that the trademark is still being used.
• In the 9th or 10th year, you must file a Combined Declaration of Use and Application for Renewal (Sections 8 and 9). These documents are submitted together to show that the trademark is still being used (Section 8) and it requests trademark renewal for the next 10 years (Section 9).
• Every 10 years thereafter, you are required to file the Combined Declaration of Use and Application for Renewal (Sections 8 and 9).

What’s Included in a Section 8 Declaration?

A Section 8 declaration requires the following information in order to be valid:

• You need to state that the trademark is being used with the business or goods/services mentioned in your registration.
• You need to include a sample of use to show proof of how the trademark is being used, such as on product labels.

What’s Included in a Combined Section 8 and 9?

When you need to submit Section 8 and 9 together, you’ll see that these forms are combined. A Section 9 application for renewal involves a request to keep your registration active.

You’ll need to include the following information with your filing of these documents:

• Your details, such as your name and address.
• Your registration number.
• If your trademark is being used, you’ll require:
  • A statement that claims the trademark is being used in business.
  • A list of all goods/services being used with the trademark.
  • Approved specimens showing proof of trademark use, such as product labels.

If the trademark isn’t being used, you’ll also need to provide information. This includes the following:

• A list of goods/services for which you’re not using the trademark.
• Date of the trademark’s final use in business.
• The approximate date when you’d like to resume trademark use.
• Reasons why you are not using the trademark.
• Steps you’re taking to continue use of the trademark.
• A signed, written request that you wish to renew your trademark.

Optional: You can also file a Section 15 Declaration of Incontestability between the fifth and sixth year. This statement ensures that other parties aren’t allowed to challenge the trademark registration. Section 15 requires the statement to mention the following:

• The trademark has been in use for five years after its registration date, and is still in use.
• There hasn’t been any legal decision against the owner’s claim of trademark ownership or their right to maintain the trademark.
• There isn’t a pending legal proceeding involving the trademark in the court or USPTO.

How to File Your Trademark Renewal

1. Log into the United States Patent and Trademark Office (USPTO).
2. Choose the renewal form you require (based on the year in which you’re filing).
3. Upload a specimen. This serves to show proof that the trademark is still being used. It can include a product label.
4. Pay a renewal fee.
5. Submit your application.

What is the Cost of a Trademark Renewal?

To renew your trademark, you’ll have to include payment. The cost of renewal depends on what form you’re filing. A Section 8 and Section 9 registration renewal application, per class, costs $325. By comparison, a Section 15 costs $250 per class.

Since the fees can change, you should always check the USPTO website for the latest costs.

What Mistakes Should You Avoid During Trademark Renewal?

To avoid encountering any delays or other issues with your trademark, such as losing your right to exclusively use the trademark, you want to remember not to commit the following mistakes.

• Missing deadlines. Set a reminder on apps or keep a note on your calendar to remind you to file the trademark renewal documents. Although there are grace periods of six months, you’ll have to pay additional fees for them. Missing the deadline and grace period will mean you have to re-apply for your trademark.
• Not including proof of use. This specimen is required to complete your application. If you’ve changed your trademark, the specimen needs to reflect this.
• Grouping trademark renewals. You have to renew your trademark registrations individually.
• Not checking for trademark challenges. If other companies have tried to challenge your trademark, such as if they believe it’s too similar to theirs, they might have tried to file an opposition. Check your trademark status before renewing your registration so you can see if there are any issues.

How Long Does it Take to Renew Your Trademark?

Once you’ve filed your application to renew your trademark, it will be reviewed by the USPTO specialists. They’ll send you a Notice of Acceptance within two months. If they notice any issues that require your attention, you’ll usually have a period of six months in which to remedy them.

Provided that you submit all your documents within the specified deadlines, trademark renewal generally takes two months. It will be longer if you are using six-month grace periods.

Do You Need a Lawyer for Trademark Renewal?

Although you’re not legally required to hire a lawyer to help you with trademark renewal, it’s advisable as it ensures the filing will be completed on time and properly to avoid any delays or issues, such as losing your trademark protection.

It’s especially advisable to consult with a lawyer if there are complex issues in your trademark renewal, such as if you haven’t been using it or you’re unsure of how to draft statements included in the renewal application.

A lawyer can help you by:

• Filing your trademark renewal before the specified deadlines.
• Guiding you through the renewal process so you don’t make any costly mistakes.
• Preparing all the documents you require.
• Helping you fill out the forms so that all the information is accurate and updated.
• Using their knowledge of trademark law to ensure you stay legally compliant.
• Helping you if you are in a trademark dispute, such as by representing you in court.

Are you ready to hire a lawyer for trademark renewal?

You should contact a lawyer on ContractsCounsel, an online legal network that connects clients to vetted lawyers. Trademark lawyers on the platform have the skills and years of experience to assist you with renewing your trademark so you protect your brand and interests.