Owning a United States federal trademark registration is critical to protecting your brand. When your trademark registers with the United States Patent and Trademark Office (USPTO), the job is not finished, and maintenance action is still required. To keep your trademark active and enforceable with the USPTO, you must timely file specific maintenance documents. Missing these maintenance deadlines can lead to cancellation of your trademark registration, leaving your brand vulnerable.
Why Trademark Maintenance Matters
A trademark registration is not perpetual: it requires active upkeep to remain valid. By filing maintenance documents, you confirm to the USPTO that your mark is still in use in United States interstate commerce, preserving your exclusive rights to the mark. These maintenance filings are critical for preserving legal protections, deterring infringers, and ensuring your trademark remains a valuable business asset. Failing to meet deadlines can result in costly revival attempts or even cancellation of your trademark registration.
Key Trademark Maintenance Filings, Fees, and Deadlines
For trademarks registered on the USPTO’s Principal Register, maintenance filings are required at specific intervals, calculated from the date of registration. All maintenance filings and fees are submitted electronically through the USPTO’s Trademark Electronic Application System (TEAS), which requires a USPTO.gov account.
- Section 8 Declaration of Use (or Excusable Nonuse)
Between the fifth and sixth year after registration of your trademark, you must file a Section 8 Declaration, specimen (sample of how the trademark is being used in interstate commerce), and fee of $325 per class of goods or services, or for or an extra fee of $100 per class, you may file within a six-month grace period following the sixth anniversary date of registration. This sworn statement confirms your trademark is still actively being used in United States interstate commerce for the goods or services listed in your registration. If the mark is not in use, you may claim excusable nonuse due to special circumstances (e.g., supply chain disruptions), but the nonuse must be justified. Failure to file the Section 8 Declaration will result in cancellation of your trademark registration.
- Section 15 Declaration of Incontestability
To claim that a trademark registered on the Principal Register is now incontestable, you must file a Section 15 Declaration once the mark has been, and remains, in continuous use in interstate commerce for a period of five years after the date of registration. The Section 15 Declaration costs $250 per class to file with the USPTO. Because the timing for filing a Section 8 Declaration coincides with the timing for filing a Section 15 Declaration, it is common and typically suggested to file a combined Section 8 and 15 Declaration.
- Combined Declaration of Use and Incontestability under Sections 8 and 15
You may file a Combined Declaration of Use and Incontestability under Sections 8 and 15 only if you have continuously used a trademark registered on the Principal Register in interstate commerce for five consecutive years after the date of registration. You must file the Combined Declaration, specimen, and fee of $575 per class within the fifth and sixth year after registration, or for or an extra fee of $100 per class, you may file within a six-month grace period following the sixth anniversary date of registration.
- Combined Section 8 and Section 9 Renewal
Between the ninth and tenth year after registration of your trademark, and every 10 years thereafter, you must file a Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal under Sections 8 and 9. The Section 8 portion reaffirms continued use in interstate commerce, while the Section 9 portion requests renewal to extend your registration for another 10 years. No separate renewal evidence is needed beyond the Section 8 specimen. This Combined Section 8 and Section 9 maintenance filing costs $650 per class, or for an extra fee of $200 per class, you may file within a six-month grace period following the tenth anniversary date of registration.
Conclusion
Maintaining your trademark registration preserves its value as a business asset, protects your brand by making it more difficult for others to challenge the validity of your mark, and strengthens your ability to enforce your rights against infringers. Due to the complexities in maintaining trademarks, guidance of counsel is strongly recommended.
Paul Stevenson is a senior associate attorney with Ritter Spencer Cheng PLLC who practices trademark law and successfully secures registration of numerous federal trademarks for his clients and manages worldwide trademark portfolios.
Blog Disclaimer: This blog is for informational purposes only, and we are not providing legal guidance, so please consult with an attorney for specific legal advice.
