Is your Trademark Registration Forever Valid?

If I Register a Trademark, Do I Own it Forever?

Trademarks are a critical asset for businesses, protecting brand identity and building consumer trust. All too often, owners of new trademarks think that they have secured a permanent protection, and they lose track of the status of their registration at the USPTO.  But securing a trademark registration is not a one-and-done process. To keep your trademark and its federal protections in place, there are specific deadlines and requirements you need to fulfill. If you keep up with renewal and maintenance requirements (and continue to use the trademark in commerce), your protection can last a very long time.  This guide will explore the duration of trademark registrations and what you need to do to maintain and renew them.

How Long Does a Trademark Last?

The short answer is, potentially forever—but only if you follow the necessary steps to maintain it.  All too often, businesses that file for a trademark registration at the USPTO end up losing their hard-earned rights after the first 6 years, because they are unaware of the requirement to file any additional documentation (or because they do not know how to file the necessary documentation).  Understanding what is required when, you can preserve your valuable trademark registration and rights. 

Initial Period

Once your trademark is registered by the United States Patent and Trademark Office (USPTO), it is valid for an initial period of six years. Within this timeframe, you must file a Section 8 Declaration to prove that you are actively still using the trademark in commerce for each of the goods/services that are listed on your registration certificate.  If you fail to file an appropriate Section 8 Declaration and a statement of use with a specimen, your registration will expire.  The Section 8 Declaration must be filed within the 5th and 6th year of registration, or at the latest, before the expiration of the grace period.

Ongoing Renewals

After the initial six years, trademark registrations must be renewed every 10 years indefinitely. Renewals require the filing of specific forms to ensure that the trademark is still in use and that all information is accurate.  These forms will be a Section 8 Declaration, a Section 9 Declaration (and again that must be accompanied with specimens proving that you are still using the trademark for the stated goods/services in commerce).  

Key Takeaway: Trademark registration can last indefinitely if you meet all renewal deadlines and continue to use the mark in commerce.

Renewal Requirements and Deadlines

Maintaining your trademark requires submitting the appropriate maintenance documents on time. Missing these deadlines can result in the cancellation or expiration of your registration.

First Renewal (Between the 5th and 6th Year)

• Filing Required: Section 8 Declaration of Use or Excusable Nonuse
• Purpose: This declaration confirms that your trademark is actively being used in commerce for the goods or services listed in the registration. If you're unable to prove use, you may claim excusable nonuse in rare circumstances (e.g., temporary closures beyond your control).
• Grace Period: If you miss the filing deadline, the USPTO allows a 6-month grace period, but it comes with additional late filing fees.

If you fail to file within the above-stated time (or if your filing is rejected), the registration will be cancelled.  Since the stakes are important, and due to the nuances of proving use, it is always advisable to seek the assistance of a knowledgeable trademark practitioner attorney.

Subsequent Renewals (Every 10 Years After Registration)

• Filing Required:
• • Section 8 Declaration of Use or Excusable Nonuse
  • Section 9 Application for Renewal
• Purpose:
• • The Section 8 Declaration reaffirms active use of the trademark.
  • The Section 9 Application for Renewal extends your trademark registration for another 10 years.
• Deadline: File between the 9th and 10th year after the trademark registration date.
• Grace Period: An additional 6-month grace period is available for late submissions with extra fees.

Again, if you fail to file within the above-stated time (or if your filing is rejected), the registration will be cancelled.

Future Renewals

Every subsequent renewal follows the same timeline as the first 10-year renewal. To preserve your trademark rights indefinitely, plan to file these documents on time every 10 years.

Optional Filing

• Between the 5th and 6th year, you can also file a Section 15 Declaration of Incontestability. This optional filing elevates your trademark's legal status, making it resistant to certain challenges.

Maintaining Your Trademark Beyond Renewals

Renewal filings aren't the only requirement for keeping your trademark alive. Here are some critical steps to help you stay compliant and avoid losing your registration.

Use Your Trademark Continuously

Under U.S. trademark law, a trademark must remain in active use in commerce. If you stop using a trademark for three consecutive years, it may be deemed abandoned and subject to cancellation.

Prove Use in Commerce

When you file renewal documents (like the Section 8 Declaration), you must submit specimens as proof of use. These can include labels, tags, packaging, or screenshots of online listings displaying your trademark.

• Tip: Keep detailed records of where and how your trademark is used in day-to-day operations to simplify specimen submissions during renewal.

Update Information on Your Registration

If you stop using your trademark with certain goods or services listed in your registration, you must remove those to avoid penalties. You can amend your registration using a Section 7 Request.

Failure to keep your registration accurate can jeopardize its validity.

Why Timely Trademark Renewal Matters

Failing to meet renewal deadlines can have serious consequences. If you miss a deadline (including the grace period), your trademark registration will be canceled or deemed expired. This can open the door for competitors to register the same or similar marks, putting your brand's identity and reputation at risk.

Here's why renewing your trademark is vital for your business:

• Preserves Federal Protection: Renewal ensures that your trademark is shielded under federal law, protecting your brand nationwide.
• Strengthens Your Legal Standing: A properly maintained trademark can prevent potential infringers and simplify enforcement in legal disputes.
• Provides a Competitive Edge: Maintaining exclusive rights to a recognizable mark helps you stand out in a crowded marketplace.

Pro Tips for Successful Trademark Maintenance

• Set Reminders for all critical filing dates. Automate these reminders to avoid missing deadlines.
• File Early: Filing at the beginning of the required period allows time to correct any issues the USPTO might flag without risking cancellation.
• Hire a Trademark Attorney to help manage filings and monitor for potential infringements.

Final Thoughts

A trademark is one of your business's most valuable assets, but its protection isn't automatic. With timely renewals, continuous use, and accurate filings, you can keep your trademark alive indefinitely, ensuring the ongoing integrity and identity of your brand.

Need help navigating trademark renewals? Reach out to experienced professionals who can guide you through the complexities and give your brand the protection it deserves!

Contact us for a Free Consultation on your Trademark matter!