Renewing Your Trademark

You should know this, but many trademark owners forget or never understood this in the first place:  the trademark has to be used; it will last forever only if you use it and act to renew it and keep it alive.

There are three Sections of the trademark law to remember; unfortunately this is harder than it needs to be:  

What to File

Section 8:    Prove Use.  This arises from 15 U.S.C. §1058

Section 9:    Renew.  This arises from 15 U.S.C. §1059

Section 15:  Make the mark incontestible.  This is not needed to keep the mark alive, but it is to your advantage to do so.  It arises from 15 U.S.C. §1065

When to File

A Section 8 affidavit must be filed between the 5th and 6th year after the registration date, between the 9th and 10th year after the registration date, AND between every successive 9th and 10th year after the registration date (e.g., between 19th and 20th; 29th and 30th, etc)

A Section 9 renewal application must be filed between the 9th and 10th year after the registration date, AND between every successive 9th and 10th year after the registration date (e.g., between 19th and 20th; 29th and 30th, etc)

Because a Section 8 adffidavit and Section 9 renewal are so often filed together, there is a combined form available.

Section 15 makes certains parts of the registration incontestable, and can be filed whenever there has been 5 years of continuous use.  Although it is not free, it is to your advantage to file it.

Because a Section 8 adffidavit and Section 15 affidavit are so often filed together, there is a combined form available.

The Sections 8 and 9 dates have a 6 month grace period.  For a fee you can file late.  Miss that date, however, and you may find that the mark has been canceled.

What Does this Cost?

As of March 2016, the USPTO fee is Section 8 - $100; Section 15 - $200; Section 9 - $300.  For a combined form add the fees (e.g., 8&15 - $300).  The late fee is $100.  Remember that your lawyer does not work for free, so that gets added to the bill.


`© Robert Rose 2015