Understanding Sec. 8 Trademark Renewal Deadlines

Time to Renew your Trademark?

A registered US trademark is an excellent asset for a business and the best way to protect its brand name and reputation. So imagine being a business owner who has successfully navigated the trademark registration process.  A few years later, things are going great.  Your business and brand presence have expanded exponentially.  Your registered trademark sets you apart from competitors. Everything is going fine, and then you get a reminder email from the USPTO that you must file a renewal of your trademark within the next year.  Assuming you have plenty of time, you defer filing the renewal until later (especially since you don't know what you need to do).  You forget to do it...and the next thing you know, you receive a notice from the USPTO that your trademark has been canceled due to the failure to file a renewal.  What do you do?  More importantly, what do you do BEFORE that happens in order to avoid having your trademark canceled? An experienced trademark lawyer can help you in both circumstances, either to avoid cancellation in the first place or to try and re-establish your registration (ie. re-file anew).  Most trademark attorneys will provide services for a reasonable flat fee, including our office.  

A significant number of trademarks are canceled for failure to file the first renewal; often enough, this is due to a lack of understanding of that requirement and how to fulfill it.  Don't let that happen to you!

What is the time frame for a Trademark Renewal?

The first renewal period falls between the 5th and 6th anniversary of registration.  The USPTO sends an email reminder to the attorney of record or trademark owner (if not represented by an attorney).  The Section 8 renewal form can be filed at any time during that generous 1 year period, along with the filing fee to renew the trademark registration.  Once renewed, the trademark registration needs to be next renewed between the 9th and 10th anniversary, and then every 10 years thereafter.  If done correctly, a trademark registration can be renewed in this fashion without limitation.  Unlike copyrights, there is no expiration for a trademark. 

What is a Section 8 Declaration?

The Section 8 Declaration is the name of the form that needs to be prepared and filed by a trademark owner with the USPTO in order to renew a US trademark registration. Practically speaking, Section 8 declarations are nothing more than sworn statements submitted by the trademark owner verifying their trademark's continuous use for all or some of the classes since the issuance of the registration. Section 8 declarations require the owner to submit a specimen to prove they are still using the trademark. Without this filing, your trademark will be canceled at the conclusion of its renewal period.  This important filing also needs to be accompanied by a filing fee, which is currently $225 per class that is being renewed.

If you haven't used your trademark in commerce, a Section 8 declaration can also set forth arguments for establishing excused non-use (together with an expressed intent to recommence use in the near future) to try and renew a trademark.  

In either instance, the form is a very technical one, and making a mistake in preparing and filing the same can be detrimental to your registration and costly. Legal advice is crucial in navigating this option.

What Happens if you miss the Due Date for Filing your Section 8?

If you do not file your Section 8 Declaration during the 1 year period before the "due date," you have an automatic grace period of 6 months after the due date.  During that 6 month period, you can file your Section 8 paperwork, but you will pay an additional fee of $100 per class (in addition to the $225 fee).  

It is generally recommended that you file early (at the beginning of the one-year filing period before the due date), as that will give you enough time to resolve and correct errors that the USPTO raises in response to your Section 8.

Like much of the trademark process at the USPTO, this renewal process can be confusing and complex for trademark owners not represented by attorneys.  This is all the more so, given that there is also an option to file a combined Section 8 and Section 15 declaration to renew and seek incontestibility status for your registration.  Do yourself a favor - avoid the headaches and stress over the process.  Avoid missing the date and losing your trademark.  Navigating this process is greatly simplified by using a trademark lawyer, and with reasonable flat fees, a trademark lawyer can turn out to be an invaluable and incredibly worthwhile investment.  

If you are nearing the time period when your trademark renewal is due, or if you have any questions about the Section 8 (or Section 15) process, please contact our office and we will be happy to assist you.  Contact us for a free consultation on the services we offer for renewing your trademark.

To find out more, contact us today!

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