Keeping your registration alive

To keep a registration alive, the registration owner must file required maintenance documents at regular intervals. Failure to file the required maintenance documents during the specified time periods will result in the cancellation of the U.S. trademark registration or invalidation of the U.S. extension of protection. 

Already know which form you need?

• Declaration of Use and/or Excusable Nonuse of a Mark under Section 8
• Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal under Sections 8 & 9
• Declaration of Incontestability of a Mark under Section 15
• Combined declaration of use & incontestability under Sections 8 & 15

What are the initial filing deadlines for registration maintenance documents?

​Review the Post-registration timeline for an overview of the process steps and time frames for maintaining a trademark registration. Note: This does include registrations based on the Madrid Protocol.

• Owners of registrations not based on the Madrid Protocol must file a Declaration of Use and/or Excusable Nonuse under §8 of the Trademark Act (filed between the 5th and 6th years after the registration date).  For an additional fee, the owner may file the declaration within the six-month grace period that follows.
• Owners of registrations not based on the Madrid Protocol must file a Declaration of Use and/or Excusable Nonuse and an Application for Renewal under §§8 and 9 of the Trademark Act between the 9th and 10th years after the registration date, and every 9th and 10th-year period thereafter, calculated from the registration date. 
• For an additional fee, the owner may file the declaration within the six-month grace period that follows. 
• If the registration meets the requirements of §15 of the Trademark Act, owners may additionally file an optional Declaration of Incontestability under §15 to enhance their rights.  See 15 U.S.C. §1065.

Official forms for filing Combined Declarations of Use and Incontestability under §§8 and 15 are available through the Trademark Electronic Application System (TEAS).

What are the required documents and deadlines for registered extensions of protection for registrations based on the Madrid Protocol? 

View the Post-registration timeline - Section 66(a) for registrations based on the Madrid Protocol for an overview of the process steps and time frames for maintaining a registration based on the Madrid Protocol.

• Holders (owners) of registered extensions of protection to the U.S. (registrations based on the Madrid Protocol) must file a Declaration of Use and/or Excusable Nonuse under §71 of the Trademark Act. (filed between the 5th and 6th years after the registration date).  You must subsequently file a Section 71 declaration on a date that falls on or between the 9th and 10th-year anniversaries of the date the USPTO issued the certificate of extension of protection, and every 9th and 10th-year period thereafter.
• For an additional fee, the owner may file the declaration within the six-month grace period that follows.  
• Official forms for filing Combined Declarations of Use and Incontestability under §§71 and 15 are available through TEAS.

Notes:

• To determine whether your registration is based on the Madrid Protocol, locate the serial number of your underlying application on your certificate of registration.  Serial numbers beginning with “79” are reserved for registrations under the Madrid Protocol.
• Holders of registered extensions of protection must renew their international registrations directly with the International Bureau of the World Intellectual Property Organization, rather than filing renewal applications with the USPTO.

• Failure to update Ownership information:  Section 8 and Section 9 documents must be filed by the current owner.  If the documents are not filed by the proper owner, the documents may be refused and the registration could be cancelled.
• Ensure all information in filing is accurate:  If goods or services currently identified in the registration are not in use, they should be deleted from the registration when you submit your filings.  Otherwise, the registration could be challenged because it contains goods and services that are not in use.

Note: Typically, old or outdated information in the USPTO database is caused by a registrant failing to notify the Office of a change in ownership of a trademark. It may be because the business changed its name, was sold, or for some other reason.  You can fix the discrepancy by filing an assignment or a "change of name" document through the USPTO's Assignment Division.

What happens next?

• You should expect either a Notice of Acceptance and/or Renewal or an office action within approximately one to two months of filing.  After filing, your declaration and/or renewal application will be reviewed by a trademark specialist in the Post Registration Division.  If the declaration and/or renewal is acceptable, the USPTO will send a Notice of Acceptance and/or Renewal.   If the declaration and/or renewal is not acceptable, the USPTO will send an Office action stating the reasons for refusal and any remedies available.
• If you receive an Office action, you will have six months, or to the end of the relevant filing period, to respond using the Post Registration Response to Office Action form.  Failure to respond will result in cancellation and/or expiration of your registration.  
• Use the Trademark Status & Document Retrieval (TSDR) system to check the status of your registration and to review all documents of record.  Enter your U.S. Registration No. and click on “Status”.