.Trademark Law 101: Trademark Renewals For Marks Registered In The U.S.

By Jeffrey E. Jacobson, Esq. & Justin M. Jacobson, Esq.

After a trademark application has been successfully prosecuted and registered with the United States Patent and Trademark Office (U.S.P.T.O.), the owner still has on-going obligations, including the duty to preserve the registration in an effort to protect the mark.  One such major obligation is to renew the registration so that it is not cancelled.  A mark that has been continuously in use in commerce for the goods or services requires action to keep the registration in effect.  See more on registering a trademark or service mark here.

There are two renewal periods for a registered mark, the first is due after the first five years of the mark’s registration; and, then, the next one is due five years after that (the 10 year renewal).  After the initial 10-year trademark renewal, the owner must continue to renew the registration every 10 years to keep it in force.

Five-Year Renewal

 An Affidavit of Continued Use (i.e., a §8 affidavit), and an optional but highly recommended Affidavit of Incontestability (i.e., a §15 affidavit), must be filed between the fifth (5th) and sixth (6th) year after the date of registration with the U.S.P.T.O.

The §8 filing fee is $125 per class and the §15 filing fee is $200 per class.  Thus, for a timely filing, the total government filing fees will be $325 for the combined §8 and §15 filings.  There is a six-month grace period during which the §8 affidavit can be filed for an additional $100 fee per class.  Thus, if the §8 is filed late, but within the grace period, the total filing fee cost will be $425 per class for the combined §8 and §15 renewal filings. If a trademark owner fails to renew within this time period as extended by the grace period, the mark will be considered “dead” and the owner’s registration will be cancelled.  If a registration is cancelled, the owner will have to re-apply in order to re-register the trademark.  This requires a new application with an additional filing fee for a mark that was previously registered.   Additionally, the registrant loses the priority and seniority that the registration had already obtained.

Ten-Year Renewal

Similarly, the § 9 trademark renewal must be filed with an additional §8 affidavit between the ninth (9th) and tenth (10th) year after the date of registration; and, every ten years thereafter.

The fee for filing a combined § 8 declaration and § 9 application for renewal is $425 per class of goods or services in the registration.  There is also a six-month grace period to file the combined filing, which includes an additional $200 fee per class of goods or services in late fees.  This late fee includes both a $100 grace period fee per class of goods or services for the Section 8 as well as a $100 grace period fee per class of goods or services for the Section 9 renewal.  Thus, if the §8 and §9 renewals are filed late, but within the grace period, the total filing fees will be $625. Similar to the five-year renewal, if a registration is not renewed during its renewal or grace period, the registration will be cancelled.  The owner will then have to apply for registration of the mark all over again.

Please remember that we have seen situations where after a trademark owner allowed their registration to be cancelled due to a lapse in doing these renewals, they were unable to obtain a new registration.  Registrations with the U.S.P.T.O. are valuable and a real asset, so they must be treated as such.

It is beneficial to consult an attorney or other competent professional regarding the formalities associated with trademark protection and mark renewals.

This article is not intended as legal advice, as an attorney specializing in the field should be consulted.

(c) 2013, 2018 The Jacobson Firm, P.C.

About the author

Justin M. Jacobson, Esq. - Vice-President, The Jacobson Firm, P.C. - Attorney Specializing in Entertainment, Sports, Esports, Fashion and Art Law. In particular, The Jacobson Firm, P.C. handles Trademarks, Copyrights, Contracts, Estate Planning, Music Business and Brand Development on behalf of creative talent and lifestyle brands.

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