When do you have to renew a federal trademark, and what does it cost?

A federal trademark registration does not renew itself. The Lanham Act keeps a registration in force only if the owner files proof of continued use at set intervals, and the USPTO cancels registrations whose owners miss them (15 U.S.C. 1058). This page lays out the filings, the windows, the current USPTO fees and the mistakes that cost owners their registrations. It builds on the maintenance section of our main copyright and trademark law page. Our post on how to register a trademark in 8 steps ends where this page begins.

How trademark maintenance works, step by step

1. The registration issues. Every later deadline is counted from the registration date on the certificate (USPTO post-registration timeline).
2. The first window opens on the fifth anniversary. The Section 8 declaration can be filed from then until the sixth anniversary, and its sworn statement must be signed on or after the day the window opens (37 CFR 2.160(a), 2.161(a)(2)). If the mark qualifies, the Section 15 declaration can go in the same filing.
3. A post-registration examiner reviews it and issues a notice of acceptance or an office action; some filings are picked for an audit that asks for more proof of use.
4. Any office action gets answered. Under the rule as it reads today, the response is due within six months of the action or by the end of the filing period, whichever is later, but always check the date printed on the action (37 CFR 2.163(b)). Defects fixed before the filing period ends cost nothing extra; after that, the deficiency surcharge applies (37 CFR 2.164). If the examiner holds to a refusal, a petition to the Director is due within six months (37 CFR 2.165).
5. The grace period. If the window closes without a filing, six more months are available with a surcharge; after that the registration is cancelled (37 CFR 2.160(a)(3)).
6. The ten-year cycle. Between the ninth and tenth anniversaries, and every ten years after, the owner files the combined Section 8 declaration and Section 9 renewal.
7. Between deadlines, goods no longer in use come off through a free Section 7 request, and a new owner records the transfer, as our page on recording a trademark assignment with the USPTO explains.

What is due, and when?

Every deadline runs from the registration date printed on your certificate, not from the filing date of the application. If a deadline falls on a weekend or federal holiday, the USPTO treats a filing on the next business day as timely.

The statute sets the windows: the first Section 8 declaration is due within the year before the sixth anniversary, later ones within the year before each tenth anniversary, and each has a six-month grace period with a surcharge (15 U.S.C. 1058(a)). Renewals under Section 9 follow the same ten-year rhythm (15 U.S.C. 1059(a)). The USPTO sends courtesy email reminders, but it is clear that a missing reminder does not excuse a missed deadline. Its own advice is to file at the start of the year the filing is due, which leaves time to fix errors before the deadline.

What goes into a Section 8 declaration?

Usually three things: a sworn statement that the mark is in use in commerce, a list of the goods and services on which it is in use, and one specimen per class showing current use (15 U.S.C. 1058(b)). The specimen has to be a real example of the mark in the marketplace, the same standard that applies during the application; our page on specimen refusals explains what the USPTO accepts.

If the mark is not in use, the owner can instead claim excusable nonuse, which requires showing that special circumstances caused the nonuse and that there is no intent to abandon the mark. The USPTO's guidance says nonuse must generally be temporary, and that lower demand for a product does not by itself excuse nonuse.

What if you stopped using the mark for some goods or services?

Then they have to come off the registration, and timing affects the cost. Deleting goods or services between maintenance filings, through a Section 7 request, carries no fee. Leaving them out of a Section 8 declaration also costs nothing. But if you file the declaration and then delete items before the USPTO accepts it, the fee is $250 per class with deletions. The USPTO also audits some maintenance filings and may ask for proof of use for more of the listed goods; an owner who cannot provide it must delete the unsupported items and pay the deletion fee.

The USPTO frames this as a legal duty to keep the register accurate, so that it lists only goods and services on which the mark is actually in use. Long gaps can also put the mark itself at risk, as explained on our page about losing a trademark by not using it.

What happens if you miss the deadline and the grace period?

The registration is cancelled. According to the USPTO, it has no authority to waive or extend the Section 8 deadline, and a registration cancelled for failure to file cannot be reinstated or revived. The only path back is a new application, which starts over with a new filing date that comes after any application someone else filed in the meantime. That differs from a pending application, where a petition can sometimes revive a missed USPTO office action deadline.

Defects are different from missed deadlines. If a filing made on time is deficient, including one filed in the name of someone other than the current owner, it can usually be corrected after the deadline with the $100 deficiency surcharge (15 U.S.C. 1058(c)). This matters after a brand changes hands: the new owner should make sure the ownership records are in order before the window opens.

Is a Section 15 declaration worth filing?

For many owners it is. Once a registered mark has been in continuous use for five consecutive years after registration and is still in use, the owner may file a declaration that makes the right to use the mark incontestable, as long as there is no adverse final decision and no pending proceeding over the owner's rights, and the mark is not generic (15 U.S.C. 1065). Incontestable status narrows the ways a competitor can attack the registration, although some grounds, such as abandonment and genericness, remain open at any time. When the timing lines up with the first Section 8 declaration, the two can be filed together.

Are the rules different for a registration that came through the Madrid Protocol?

Yes. A U.S. registration based on an international registration has a serial number beginning with 79. Its owner files Section 71 declarations of use with the USPTO on a similar six-year and ten-year schedule (15 U.S.C. 1141k), at $325 per class, but renews the international registration itself with the International Bureau of the World Intellectual Property Organization rather than with the USPTO. Owners based outside the United States also need a U.S.-licensed attorney for these filings; see our page on foreign companies and U.S. trademark counsel.

What changes the answer

• A Madrid-based registration. A serial number beginning with 79 means Section 71 declarations with the USPTO and renewal with WIPO, not Section 9 (15 U.S.C. 1141k). Our page on protecting a U.S. trademark in other countries explains how Madrid filings are built.
• A real reason for nonuse. The TMEP gives examples that can excuse nonuse, such as a trade embargo, temporary nonuse during the sale of a business, retooling of essential equipment, or illness or fire. A business decision, falling demand or use only in another country does not (TMEP 1604.11). The declaration must state when use stopped and when it is expected to resume (37 CFR 2.161(a)(6)(ii)).
• A change of owner or name. The declaration must be filed by the owner (37 CFR 2.161(a)(1)). The USPTO says a filing whose ownership details do not match its records can be refused, so record the assignment or name change, or send evidence of it with the filing. Madrid-based holders record changes with WIPO, not the USPTO.
• A licensee doing the selling. Use by a related company, meaning one whose use the owner controls as to the nature and quality of the goods or services, counts for the owner (15 U.S.C. 1055, 1127).
• An updated logo. A registration can be amended for $100, with a new drawing and specimen, but not in a way that materially alters the mark (37 CFR 2.173). A substantially new design generally needs its own application.
• The Supplemental Register. Section 8 still applies, but the USPTO says Section 15 is not available for marks on that register.

A worked example

Common mistakes

• Waiting for the reminder. The USPTO's courtesy emails are a convenience; a missing one does not move the deadline.
• Signing too early. A declaration signed before the window opened does not meet 37 CFR 2.161(a)(2).
• Listing goods no longer sold. Deleting them after filing costs $250 per class, and an audit can surface them.
• Filing in a former owner's name. A mismatch with the USPTO's ownership records can lead to a refusal.
• Reusing the original specimen. The specimen has to show current use, and a mockup is refused just as it is during the application.
• Paying a private company's notice. The USPTO warns that many renewal mailings from private companies are fraudulent and that its own emails come only from the uspto.gov domain.

What to do this week

1. Look up the registration in TSDR and note the registration date, owner name, classes and serial number.
2. Write the window, the end of the grace period and the ten-year date into your calendar.
3. Go through each listed good and service and mark which ones you still sell under the mark.
4. Collect one current specimen per class; our page on trademark specimen refusals shows what the USPTO accepts.
5. Check that the owner name matches your company today, and record any assignment or name change.
6. Decide whether a Section 15 declaration fits, then file early in the window and check TSDR a couple of months later.

Frequently asked questions

Can I file the Section 8 declaration before the fifth anniversary?

No. The window opens on the fifth anniversary of registration, and the sworn statement must be signed on or after that date (37 CFR 2.160(a), 2.161(a)(2)). Filing at the start of the window leaves the most time to fix problems.

Does the first Section 8 declaration renew the registration?

No. An accepted six-year declaration keeps the registration in force for the rest of its ten-year term, according to the USPTO. Renewal comes with the Section 9 application at the ten-year mark, filed together with another Section 8 declaration.

How long does the USPTO take to review a maintenance filing?

The USPTO says about one to two months, after which it sends a notice or an office action. You can follow the record in TSDR.

What if someone challenges the registration while I am renewing it?

A maintenance filing does not stop a challenge. Cancellation petitions are heard by the Trademark Trial and Appeal Board, and our page on how a TTAB proceeding runs shows the stages. A Section 15 declaration also cannot be filed while a proceeding over your rights is pending (15 U.S.C. 1065).

If my registration is cancelled, can someone else register my brand?

A cancelled registration no longer protects the brand on the register, and a new application of yours takes a new filing date. If another business files first, see our page on what to do when someone files for your brand name.

Zala IP Law handles post-registration filings as part of its trademark work for owners across the United States and internationally, and builds the maintenance calendar at the outset so dates are not missed years later. To check where your registration stands, request a consultation or call 404-313-1701. More general cost and timing questions are covered in our trademark registration FAQ.