Renewing A Trademark
Trademark registrations need to be renewed 5-6 years after registration, 10 years after registration, and every 10 years thereafter. There are several flavors of trademark renewal filings.
Declaration Of Incontestability Of A Mark Under Section 15 (year 5). To claim that a mark registered on the Principal Register is “incontestable,” registered trademark owners must file a Section 15 Declaration of Incontestability (DOI) once the mark has been in continuous use in commerce for a period of five (5) years after the date of registration, or date of publication under § 12(c), and the mark is still in use in commerce. Section 15 does not apply to marks on the Supplemental Register. The DOI may be filed within one (1) year after the expiration of either any five-year period of continuous use following registration, or any five-year period of continuous use after publication under § 12(c). The “incontestable” status means that the registration is: (1) conclusive evidence of the registrant’s ownership and exclusive right to use the trademark, (2) immune from attack on the basis of prior use, and (3) immune from attack on the basis of descriptiveness. Because incontestable status confers valuable rights, we recommend filing for incontestable status as soon as you qualify to do so.
Declaration Of Use Of A Mark Under Section 8 (year 5 and every 10 years after registration). Registered trademark owners must file a Section 8 Declaration of Use (DOU), specimen, and a fee on a date that falls on or between the fifth (5th) and sixth (6th) anniversaries of the registration. For an extra filing fee, you may file within the six-month grace period following the sixth (6th) anniversary date. Failure to file a section 8 declaration will result in cancellation of your trademark registration. If you intend to keep protecting your trademark, then we recommend filing the DOU at the 5-year point or shortly thereafter.
Renewal Application (every 10 years after registration). Registered trademark owners must file a Renewal Application (RA) on a date that falls on or between the ninth (9th) and tenth (10th) anniversaries of the registration and each successive ten-year period thereafter (or, for an extra filing fee, you may file within the six-month grace period). Also, registered trademark owners must file a Section 8 declaration within the same period (or, for an extra filing fee, you may file within the six-month grace period following the registration expiration date). Failure to file this document will result in cancellation/expiration of your trademark registration.
There is no “undo” for missing trademark renewal deadlines. If your registration has lapsed, then your best best is to start over with a new trademark application.
