Under current U.S. law, a trademark can last as long as its owner renews and continues to use it. In other words it could last forever, provided that proof of use is shown and the owner files a renewal. Below, I explain how long a trademark may be good for your business and your renewal dates.
How Long is a Trademark Good For in the U.S.?
As explained above, a trademark may last forever. However, the owner must file for either a declaration and/or renewal within clear “anniversaries” or “time-frames.” The trademark registration date starts the clock ticking on these anniversaries; the renewal date is every ten years. The United States Patent and Trademark Office (“USPTO”) requires only a declaration between the 5th and 6th anniversaries. USPTO requires a declaration plus renewal between the 9th and 10th anniversary.
Between the 5th and 6th Anniversary – Section 8 Declaration Only
In order for a trademark survive, its owner must file a declaration between the 5th and 6th registration anniversary. This declaration is technically not called a “renewal,” but functions like a renewal. A Section 8 renewal is a sworn statement that the trademark is in use, or there is excusable non-use.
The declaration provides the following:
- the trademark has been in continuous use since registration for each Class of Goods and/or Services listed (unless you claim “excusable nonuse”);
- provides at least one “specimen” of use per Class of Goods and/or Services (e.g., website PDF showing services, .jgeg file showing packaging, tags, labels on the goods, etc.); and
- declaration fees of $225 per International Class of Goods and/or Services ($325 under the grace period discussed below).
Optional Incontestability Filing – Section 15
You may file for “incontestability” (called “Section 15”) to strengthen your trademark. Filing for Section 15 Incontestability is optional. Incontestability means that there is a presumption in your favor that you are the valid and exclusive owner of the mark. In essence, this makes it harder for others to file similar names with the USPTO. In addition, incontestability can come handy in either bringing a trademark infringement suit or defending yourself in proceedings.
My clients often combine Section 8 and Section 15 into one filing for $425 per International Class of Goods and/or Services ($525 under the grace period discussed below).
9th and 10th Anniversary Renewal – Section 8 & 9 Declaration AND Renewal
The USPTO requires a Section 8 declaration and a Section 9 renewal between the 9th and 10th registration anniversary. Unlike the 5th and 6th anniversaries, the USPTO requires a declaration and renewal.
As such, the Section 9 renewal requires the following:
- a Section 8 verified statement that each Class of Goods and/or Services are in use (or excusable nonuse);
- Section 9 request for renewal form;
- at least one specimen per Class of Goods and/or Services; and
- fees in the amount of $ $525.00 per International Class of Goods and/or Services ($725.00 under the grace period).
How Long a Trademark May Last in the U.S. May Be Infinite
From thereon out, renewal occurs once every decade (e.g., 19th and 20th anniversary, 29th and 30th anniversary, etc.). These renewals require a combined Section 8 and Section 9 filing.
What Happens If I Miss the Trademark Renewal Deadline?
If you miss the renewal deadline, the United States Patent and Trademark Office (“USPTO”) does issue a grace period. The grace period is six-months long. Please note, however, that the USPTO will charge $100.00 extra for filings within the grace period.
If you miss the grace period, your mark will lapse automatically and the USPTO will list it as “dead” or “abandoned.” You may revive an abandoned trademark for an extra fee plus statement that the abandonment was unintentional.
An Example of How Long a Trademark Lasts in the U.S.
I am going to illustrate by example how long a trademark could last.
For example, John Doe registers a trademark for JD SFTWRE CONSULTING for Web3.0 consulting on January 1, 2023. January 1, 2023 is the registration date from which all anniversaries are calculated.
John Doe’s declaration due date for JD SFTWRE CONSULTING will fall between January 1, 2028 and January 1, 2029. There is a six-month grace period for an additional fee. Therefore, if John misses his January 1, 2029 deadline, he may file his renewal until July 1, 2029 (i.e., six months later), for an additional fee.
Years later, John Doe continues to use his mark during its 9th and 10th registration anniversary—January 1, 2032 and January 1, 2033. Again, John could file his renewal six months later during the grace period.
John Doe could potentially renew the same trademark every decade into the future with a combined Section 8 declaration and Section 9 renewal. So long as the owner uses and renews its trademark, how long a trademark is good for remains in the owner’s hands.
How Do You File for Trademark Renewal?
U.S. trademark renewals are filed electronically with the United States Patent and Trademark Office (“USPTO”). You can do a paper filing, but the USPTO advises against it due to:
- their intent to move completely online;
- extra fees; and
If it is time to renew, but you feel uncomfortable filing for a renewal for your trademark, please contact me. You may reach me at 312-618-0713 or at firstname.lastname@example.org.