Trademark registration offers many benefits, but to take advantage of them, you must comply with several formalities: renew the trademark and file a declaration of trademark use. If these formalities are not adhered to within the time limits specified by law and during the grace period, the trademark will be cancelled.
Trademark Renewal
A trademark must be renewed every 10 years. For example, if a trademark is registered on June 9, 2025, you need to renew it between June 9, 2034, and June 9, 2035 (i.e., between the 9th and 10th years from the date of registration). If you fail to do so, you will have the opportunity to renew it using the grace period. The grace period is 6 months after the end of the standard renewal period. In our example, the 6-month grace window from June 9, 2035, expires on December 9, 2035. However, it is worth not delaying, as there is an increased fee for such a renewal during the grace period.
The renewal fee is calculated based on the number of classes for which the trademark is registered.
If your trademark is registered in the US under the International Procedure (the so-called Madrid Protocol), then you need to renew it through the International Bureau of the World Intellectual Property Organization.
Trademark Maintenance
Apart from renewing the trademark, you need to use it and file a declaration of use along with the specimen. For the first time after registration, you need to do maintenance between the 5th and 6th year. So, if your trademark is registered on June 9, 2025, you need to file a declaration of use and the corresponding specimenbetween June 9, 2030, and June 9, 2031. As with trademark renewal, there is a 6-month grace period with an increased fee. The cost of the fee depends on the number of classes.
The next maintenance must be done between the 9th and 10th years, and then every subsequent year. Since subsequent maintenance coincides with renewal deadlines, they can be done simultaneously by filing a combined declaration.
If your trademark is registered in the US under the international procedure, you must file your maintenance with the USPTO rather than with the International Bureau of the World Intellectual Property Organization.
You might also be interested: Maintenance of Trademarks Registered in the U.S. under the Madrid Protocol
If you do not use a trademark
When filing a declaration of use, you must file at least one specimen for each class for which the trademark is registered. However, this does not mean that you do not have to use each product or service in the relevant class. For example, if you have a trademark for class 41 – educational services, podcast creation, and conference organization. To maintain the trademark, you only need to file one specimen, for example, for educational services, but you must also use the trademark for other services.
If you do not use a trademark for all goods or services, you have several options:
- If there is a valid reason for such non-use, file a declaration on the use and non-use of part of the goods and services for valid reasons (excusable non-use). Illness, fire, and other disasters may be examples of excusable nonuse. For guidance on excusable reasons, see §1604.11 TMEP.
- If you do not have a valid reason, you can reduce part of the goods and services that you do not use and file a declaration only for the services you use. In this case, your trademark will operate in accordance with the reduced list of goods and services.
Additional actions for the trademark owner to consider
There is an option to strengthen the trademark by filing a declaration of incontestability. While such a filing is not obligatory, it equips the trademark owner with additional benefits when it comes to trademark protection. It gives the trademark the status of “incontestable” in certain ways, for example, such a trademark cannot be contested on the grounds of descriptiveness and priority.
There are some requirements that the trademark must comply with to be granted the status of incontestable. First and foremost, the trademark must be used continuously for 5 years after it has been registered, without any pauses or temporary withdrawals of products/services. Also, when submitting a declaration, the trademark owner affirms that there is no final decision that adversely affects their ownership of the mark, and that there are no proceedings concerning these rights currently pending before the USPTO or in court.
The declaration of incontestability can be filed separately or combined with the maintenance declaration.
You might also be interested: The Power of Incontestability: Strengthening Your U.S. Trademark
Trademark portfolio management
A business may have more than one registered trademark and in more than one country. A business may also have other intellectual property that needs to be renewed or extended. In order not to miss deadlines, it is worth docketing all your intellectual property within the relevant deadlines. This can be done independently or by engaging a trademark attorney who will maintain the relevant portfolio, notify you of the next steps to be taken, and complete such actions accordingly.
It is also recommended to review your IP portfolio at least once a year and check it against your current plans:
- Does the mark you registered as a trademark correspond to the mark you are currently using? In some cases, you can make changes to the trademark, and in some cases, it is more expedient to register a new trademark;
- Does the registered list of goods and services correspond to the list you are currently using? For example, if you have a trademark registered for software that users download, and today you also offer SAAS solutions, then you need to register a trademark for SAAS solutions as well. The same applies to clothing brands: if you started your fashion business with only T-shirts, but today your range has expanded to include jeans, jackets, and dresses, then you need to file a new trademark for the new list.
- Are the countries in which your trademark is protected sufficient for you? For example, if you have already expanded your business to other countries, such as Canada or the United Kingdom, you should consider registering your trademark there as well.
- Has your organizational form, company name, or address changed? If so, you need to take the appropriate action. Making changes to the name and address of the trademark owner is a simple and inexpensive procedure.
Trademark attorney Mariya Ortynska provides comprehensive support to clients throughout the trademark process, including managing post-registration renewals and maintenance. If you need legal assistance regarding these matters, you can reach Ortynska Law at m.ortynska@ortynskalaw.com or by phone at 9147035632.