Navigating the Critical Deadlines for U.S. Trademark Renewal: A Guide for Years 5–6 and 9–10
Maintaining a U.S. trademark registration is not a "set it and forget it" process. To keep your trademark rights alive, you must comply with strict deadlines for filings and fees at key intervals: between the 5th and 6th year, and again between the 9th and 10th year after registration. Missing these deadlines can result in the cancellation of your trademark, leaving your brand vulnerable. Below is a step-by-step guide to navigating these critical phases.
1. The 5th–6th Year: Filing the Section 8 Declaration
Purpose: Demonstrate that your trademark is still actively used in commerce.
Key Requirements:
File a Section 8 Declaration of Use: Submit evidence that your trademark is in use for all goods/services listed in the registration.
Deadline: Between the 5th and 6th anniversary of your registration date.
Fees: As of 2023, the filing fee is $225 per class of goods/services if filed electronically through the USPTO’s Trademark Electronic Application System (TEAS).
What to Prepare:
Examples of use: Submit specimens (e.g., product labels, packaging, website screenshots) showing the mark in connection with the goods/services.
Verify accuracy: Ensure the owner name, mark, and goods/services listed match the original registration.
Consequences of Missing the Deadline:
If you miss the deadline, you have a 6-month grace period to file with an additional $100 late fee per class.
Failure to file within the grace period results in automatic cancellation of your registration.
2. The 9th–10th Year: Renewing Your Trademark with Sections 8 & 9
Purpose: Renew your trademark for another 10-year term.
Key Requirements:
File a Combined Section 8 Declaration and Section 9 Renewal: This dual filing confirms ongoing use and renews the registration.
Deadline: Between the 9th and 10th anniversary of your registration date.
Fees: As of 2023, the combined filing fee is $525 per class if submitted via TEAS.
What to Prepare:
Updated specimens: Provide current examples of trademark use (similar to the 5th–6th year filing).
Review goods/services: Remove any goods/services no longer in use. The USPTO may cancel unused categories.
Consequences of Missing the Deadline:
A 6-month grace period applies with a $200 late fee per class.
Missing both the deadline and grace period means permanent cancellation. You’ll need to reapply as a new trademark, risking loss of priority.
Pro Tips for Success
Set Calendar Alerts: USPTO reminders are not always reliable. Mark deadlines 3–6 months in advance.
Audit Your Trademark Use: Before filing, confirm that the mark is used as registered. Modify or delete outdated goods/services.
Work with an Attorney: For complex portfolios or international registrations, professional guidance minimizes errors.
Keep Records Updated: Ensure the USPTO has your current email and address to receive notifications.
The Cost of Procrastination
Allowing your trademark to lapse can be catastrophic. Competitors may exploit the gap to register similar marks, or you may lose legal leverage in infringement disputes. Worse, re-registering a canceled mark is not guaranteed—another party could claim it first.
Final Thoughts
U.S. trademark renewal is a marathon, not a sprint. By understanding the requirements for the 5th–6th and 9th–10th year deadlines, you safeguard your brand’s identity and legal rights. Stay proactive, keep documentation organized, and treat these deadlines as non-negotiable. After all, your trademark is more than a symbol—it’s the foundation of your brand’s equity.
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