Can a Trademark be Renewed?

Yes! A trademark registered in the United States Patent and Trademark Office (USPTO) can be renewed every ten years between the 9th and 10th years of registration.

There is also a required filing showing the trademark is in continuous use which is due between the 5th year and 6th year of registration.

What is the Trademark Renewal Timeline?

• ​Declaration of Use (required) – between the fifth and sixth year after the U.S. trademark registration is active.  
• Incontestability (optional) – also between the fifth and sixth year after the trademark registers.
• Renewal (required) – between the ninth and tenth years after the trademark registration is active.

In order for your registered trademark to continue to have federal trademark protection, these filings are needed to keep the trademark rights active.

What Maintenance Documents are required?

For both the Declaration of Use and the Renewal application, a trademark specimen is required and the forms for both are on the USPTO website.  This trademark specimen shows the mark on goods or in advertising of services to show that the registrant continues to have the exclusive right to use the trademar and continues to enforce those legal rights.

What Additional Fees are There?

The trademark owner can file the Declaration of Use and Incontestability between the fifth and sixth years after registration for a U.S. trademark registration on the principal register..

The Declaration of Use is the required filing showing the trademark is in continuous use which is due between the fifth and sixth years after registration. 

• Filing Declaration of Use after 5 Years (§8 declaration): $225 per class of goods or services (if filed before the grace period)
• Filing Declaration of Use after 5 years (§8 declaration) combined with Declaration of Incontestability (§15 declaration): $425 per class of goods or services (if filed before the grace period).
  
  • This combined declaration of use – also called a combined Section 8 and 15 filing – is the most common filing as it gives the most amount of rights to the trademark holder.
• Filing Declaration of Use and Application for Renewal every 10 years (Combined §8 declaration and §9 renewal): $525 per class of goods and services (if filed before the grace period).
  • The renewal date is the tenth year after the date of registration of the trademark.
• Filing Declaration of Incontestability (§15 declaration): $200 per class.

There is a six-month grace period between the due date of the Declaration of Use or the trademark renewal.  Either the renewal fee or the declaration fee will be bigger because of the fees of the 6-month grace period.  The trademark renewal deadlines are at the end of the grace period, when the registrations will reach their expiration date if not renewed.

What if a Trademark Owner is not Using the Federally Registered Trademark?

A trademark owner can file a Declaration of Excusable Nonuse for either the Declaration of Use or the trademark renewal.

The requirements for a declaration of excusable nonuse are (i) the date the registrant stopped using the mark, (ii) the approximate date when registrant expects to resume use, (iii) and the special circumstances that excuse the nonuse and show that it is not due to an intention to abandon the mark. Trademark Rule 2.161(a)(6)(ii), 37 C.F.R. § 2.161(a)(6)(ii). See also Trademark Manual of Examining Procedure (TMEP) § 1604.11 (2022).

A registrant claiming excusable nonuse should do more than recite circumstances indicating that it is unable to use the mark on or in connection with the goods or services covered by the registration. The registrant must establish that such inability is due to circumstances beyond its control. Thus, a mere statement that a registrant is ill and cannot conduct his business during the illness would not be enough to excuse nonuse unless it is also shown that the business is a one man operation which could not continue without his presence. Abramson, Notes From the Patent Office, 50 T.M.R. 740, 741 (August, 1960).  Also see In re New Eng. Mut. Life Ins. Co., 33 USPQ2d 1532, 1534 (Comm’r Pats. 1991).

What does it Mean for a Trademark to be Incontestable?  

The owner of a registered trademark wants the federal registration to be deemed incontestable.  This means that certain claims in a trademark infringement or a trademark cancellation are not available to a party who challenges the federal trademark registration, such as nonuse of the trademark or abandonment for lack of distinctiveness.  

Courts have rejected claims on nonuse of the trademark:

A nonuse claim which alleges that Plaintiff’s underlying trademark application was void ab initio because the subject mark was not in use in commerce at the time the underlying application was filed, is not enumerated under Trademark Act Sec. 14(3), and is not available against a registration which is more than five years old. See Maids to Order of Ohio Inc. v. Maid-to-Order Inc., 78 USPQ2d 1899, 1906 n.6 (TTAB 2006) (“[W]here as here, MTO’s registration is incontestable, MTO-Ohio may not challenge the registration on the ground that the mark was not used in commerce.”); Pennwalt Corporation v. Sentry Chemical Company, 219 USPQ at 550 (“[T]here is nothing in Section 14(c) which admits [nonuse] as a ground for cancellation of a registration after five years have elapsed, unless the misstatement was with fraudulent intent.”).

Courts have also rejected claims of lack of distinctiveness of the trademark:

Abandonment may not be based on an assertion that the mark which was registered more than five years earlier is no longer, or never was, distinctive. See Park ‘N Fly, Inc. v. Dollar Park & Fly, 469 U.S. 189, 224 USPQ 327, 330 (1985) (“Park ‘N Fly”) (“The language of the Lanham Act … refutes any conclusion that an incontestable mark may be challenged as merely descriptive.”). Accord Sunrise Jewelry Mfg. Corp. v. Fred S.A., 175 F.3d 1322, 50 USPQ2d 1532, 1534 (Fed. Cir. 1999) (“an incontestable mark cannot be challenged, for example, for mere descriptiveness, or on the basis that the mark lacks secondary meaning.”) and Bausch & Lomb Inc. v. Leupold & Stevens Inc., 6 USPQ2d 1475, 1477 (TTAB 1988) (“an attack on an incontestable federally registered mark on the ground that it serves only as ornamentation and is not distinctive as applied to the goods specified in that federal registration would be contrary to the mandate of [Park ‘N Fly]”). 

Courts determine if a trademark is incontestable in a legal action.  The U.S. Patent and Trademark Office is whose job is “[a]cknowledging receipt of the affidavit or declaration provides notice to the public that an affidavit or declaration of incontestability has been filed; it is not a determination by the USPTO that the registration is in fact incontestable. The question of whether the registration is incontestable arises and is determined by a court if there is a proceeding involving the mark.” Trademark Manual of Examining Procedure (TMEP) § 1605 (2018).

What About a Common Law Trademark?

This process is only available for trademarks registered at the United States Patent and Trademark Office.  A common law trademark derives its protection only from use in commerce.  The federally registered mark derives its use from interstate commerce, commerce that Congress can regulate, and the benefits conferred through statutes.  

Do you need a trademark renewal service for your U.S. trademark registration?  Contact us at Verna Law, P.C., at anthony@vernalaw.com or at 914-908-6757. We can help you from the trademark registration date through the trademark renewal process. Verna Law, P.C. is a law firm that focuses on intellectual property (patents, trademarks, copyrights) and advertising law.