Trademark Law: U.S. Trademark Registration Renewals – Renewal of Registered Trademarks
By Justin M. Jacobson, Esq.
To maintain a trademark registered with the United States Patent and Trademark Office (U.S.P.T.O.) in good standing and to continue to receive the benefits of the registration, the mark must be renewed so that it is will not be invalidated and cancelled. If a registration is cancelled, the owner will lose the priority and seniority that the registration had already obtained through its continuous use in commerce for the listed goods or services and they will have to re-apply to re-register the trademark. This would require the preparation and filing of a new trademark application, including paying an additional filing fee for a mark that was previously registered.
In the U.S., there are two renewal periods for every registered trademark. The first renewal period is the five (5) year trademark renewal which must be filed five years after the mark’s registration date. After this first renewal filing, the subsequent renewal is the ten (10) year renewal (the second renewal), which is due five years after the proceeding trademark renewal. Following the second renewal, the registrant must continue to renew the trademark every ten (10) years to keep the registration in force.
Five-Year Trademark Renewal – The Filing of Section § 8 and § 15 Trademark Renewal
After a trademark has been in continuous use for five years, the owner is required to file the five-year trademark renewal. This consists of the preparation and filing of an Affidavit of Continued Use (the Section §8 affidavit) as well as potentially the accompanying Affidavit of Incontestability (the Section §15 affidavit). In particular, the first trademark renewal must be filed between the fifth (5th) and sixth (6th) year after the registration date. Failure to file the appropriate renewals within the time period will cause the registration to be cancelled unless the required renewal is filed within the extended grace period.
As of May 2022, the current §8 filing fee is $225 per class and the §15 filing fee is $200 per class. Therefore, the total government filing fees for a timely filing will be $425 for the combined §8 and §15 filings in addition to any applicable legal fees. There is a six-month grace period during which the renewal affidavits can be filed for an additional filing fee per class. Again, if a trademark owner fails to renew within this period, the mark will be considered “dead” and will no longer be registered.
Ten-Year Trademark Renewal – The Filing of Section § 8 and §9 Trademark Renewal
The next required trademark renewal is due five years after the previous five-year renewal. This is the ten-year renewal which consists of a § 9 trademark renewal and an additional §8 affidavit. These filings must be made between the ninth (9th) and tenth (10th) year after the mark’s registration date. After this, a mark must be renewed every ten years thereafter to stay in effect.
Currently as of May 2022, the filing fee for the ten-year trademark renewal is $525 per class of goods or services which consist of the combined § 8 declaration and § 9 application for renewal. Like the five-year renewal, there is also a six-month grace period to file the necessary ten-year renewal, which includes additional filing fees per class of goods or services. Similar to the five-year renewal, if a registration is not renewed during its renewal or extended grace period, the registration will be cancelled, and all rights occurred in the mark will be lost.
Overall, a valid U.S. trademark registration is valuable business asset that needs to be properly protected and maintained over the years. In fact, there have been instances where after a trademark owner allowed their registration to expire for failure to renew it, and then were unable to later obtain a new registration in the mark due to another party applying for and receiving a registration for the same or a confusingly similar one.
Since the U.S.P.T.O. fee schedule is subject to periodic rate changes, the current fee schedule can be found here.
This article is .not intended as legal advice, as an attorney specializing in the field should be consulted.
© 2022 Justin Jacobson Law, P.C.