Trademark Renewal and Maintenance: Section 8, 9, 15 and 71 Deadlines

Enter the registration date to see each window. Use it to plan, then confirm the dates in TSDR's Maintenance view.

The Section 8 declaration is a sworn statement that the mark is still in use in commerce with the listed goods and services. It is required between the fifth and sixth anniversaries of registration and again within the year before every ten-year anniversary. It includes:

• A verified statement that the mark is in use, signed by someone authorized to sign for the owner.
• The goods and services the mark is in use with, with the rest deleted.
• One specimen per class showing current use.
• The fee for each class.

Excusable nonuse. If the mark is temporarily out of use, you can instead claim excusable nonuse. You must explain the special circumstances beyond your control and the specific steps you are taking to resume use. A business decision or falling demand does not qualify; circumstances such as a trade embargo, illness or a fire can. Simply stating that special circumstances exist is not enough.

Learn the term: Section 8 declaration of use or excusable nonuse.

A registration runs in ten-year terms. The Section 9 renewal extends it for another ten years. It can be filed within the year before the term ends, or within the six-month grace period after it with a surcharge. In practice it is filed together with a Section 8 declaration as a combined filing, so you prove use and renew in one step.

Learn the term: Section 9 renewal application.

A Section 15 declaration is optional. It can make a registration incontestable, which limits the grounds on which it can be challenged. It is available for registrations on the Principal Register once the mark has been in continuous use for five consecutive years after registration, is still in use, and there is no adverse final decision and no pending proceeding about the owner's rights. It must be filed within one year after the end of a qualifying five-year period, and is often combined with the first Section 8.

The USPTO's acknowledgment of a Section 15 filing is not a ruling that the registration is incontestable; that is for a court to decide if it comes up. A generic term can never become incontestable.

Learn the term: incontestable trademark.

A U.S. registration that came through the Madrid Protocol (an extension of protection under Section 66(a)) is maintained with a Section 71 declaration instead of Section 8. It is due between the fifth and sixth anniversaries of the U.S. registration date, then within the year before each ten-year anniversary, with the same six-month grace period.

The international registration itself is renewed with the World Intellectual Property Organization (WIPO), every ten years from the international registration date, not through the USPTO. If the international registration lapses, the U.S. registration is cancelled too.

The USPTO audits a share of Section 8 and Section 71 filings, at random or when something looks off. In a random audit the examiner asks for proof of use for additional goods or services in each audited class; directed audits can cover some or all of them.

• If you cannot show use for an item, it must be deleted, with a $250 deletion fee per class.
• If you do not respond, the registration is cancelled.
• Good proof is current and specific: photos of the goods bearing the mark, or dated web pages showing the mark where the goods can be bought.

Any post-registration office action, audit or not, has a response period: generally three months, with one three-month extension available for a fee.

If the required filing is not made by the end of the grace period, the registration is cancelled (Section 8 or 71) or expires (Section 9). It cannot be revived or reinstated, because the deadlines are set by statute and the USPTO has no authority to waive them.

• USPTO error: if you can prove you filed on time and the USPTO missed it, a petition to the Director is possible within two months of the cancellation notice.
• Otherwise: file a new application. Any rights that come from continuing to use the mark are separate from the registration, whose benefits end with it.

For applications rather than registrations, see what to do when a trademark application is abandoned.

The USPTO sends courtesy email reminders for Section 8, Section 71 and Section 9 deadlines on the first day of the filing period, to every email address of record. It is not obligated to, and not receiving one does not excuse a missed deadline. It does not send deadline reminders by text message.

Expect official-looking letters too. Private companies send "renewal notices" and invoices, often with names that include "United States", "Trademark" or "Office", charging far more than the USPTO. Before paying anything, check that the correspondence appears in your record's Documents view in TSDR; with few exceptions, if it is not there, it is not from the USPTO. See the USPTO's guide to recognizing common scams (opens in a new tab).