TRADEMARK RENEWAL & MAINTENANCE - HOW DO I KEEP MY TRADEMARK ACTIVE? by ResearchCopyright.com

Filing for and receiving protection for your trademark will not protect your mark forever. Unlike patents and copyrights, you must renew a trademark more frequently. Once the U.S. Trademark Office has approved your application, you can use your mark indefinitely. The caveat is that you must renew your trademark during the fifth and sixth years, between the ninth and tenth years, and then again every ten years.

You must file a Section 8 Declaration of Continued use (or Excusable Non-use) between the 5^th and 6^th years after the original date of registration. Between the 9^th and 10^th years after the original registration, you must file a Declaration of Use (or Excusable Non-use) and an Application for Renewal. You must file both of those forms between every 9^th and 10^th year after that. The United States Patent and Trademark Office will cancel your trademark registration if the Section 8 forms are not filed on time.

At the time of this writing, the fee for filing the Section 8 Declaration is $100 per class of goods or services registered.

The following must be included in a Section 9 Declaration: The registration number of the trademark, the name and address of the current owner of the trademark, the fee for filing the declaration, a statement saying that the registered mark is in use in commerce and a list of the goods and services it is being used with, and a signature from either the owner of the mark, a person with first-hand knowledge of the facts and has the authority to act on behalf of the trademark owner, or an attorney who has written or verbal power of attorney from the owner of the trademark.

The forms required to file between the 5^th and 6^th years and the 9^th and 10^th years are available on the USPTO website.

If the renewal is accepted, the USPTO will send you a Notice of Acceptance, if it is not accepted, they will send an Office Action stating why they have refused the renewal and a list of remedies available to correct your trademark renewal application.

The Declaration of Excusable Non-use is a statement filed by the owner of a mark that the mark is not in use and that the non-use is not due to any intention of abandoning the mark.

When filing a Section 8 Declaration of Excusable Non-use, the Declaration must include the registration number of the trademark, the name and address of the current trademark owner, the fee for the filing of the declaration, and a list of the goods and services with which the mark is NOT in use, the date of the last commercial use of the mark, when the mark is expected to be used again, and details regarding why it is not being used and steps taken to assure its future re-use, and a signed and dated affidavit.

Once the mark has been reinstated and is being used for commercial purposes, it is not required to file another Section 8 form until the next filing period.

Between the 9^th and 10^th years, the owner of the trademark must file a combined Declaration of Use (or Excusable Non-use) and an application for renewal under Section 8 and 9.

The first part, the Declaration of Use (or Non-use) is the same as it is for the period between the 5^th and 6^th years. The combined cost of filing both of these forms is $500 ($100 for the Section 8 form, and $400 for the Section 9 renewal forms).

The Section 9 renewal application must include a request to renew the trademark registration, signed by the registrant or their representative. It must also have the trademark registration number, mark, and date of the original registration, the name and address for correspondence, and the filing fee.

If the Section 9 form has been accepted, you will receive a notice granting the renewal, if it is refused, the USPTO will send an Office Action stating why, and a list of remedies, if available.