United States Maintenance And Renewals Of Trademark Registrations
- Madrid Protocol registrations
- Notes for registrations
- Declaration of incontestability
- Unsolicited third-party emails
- Notice of acceptance and/or renewal
To keep your U.S. registration valid, you must file maintenance documents required by the USPTO at regular intervals. Failure to do so will result in the cancellation of your registration or, for Madrid Protocol filings, invalidation of the U.S. extension of protection.
In order for us to advise you as to your maintenance and renewal obligations, you need to provide us with the registration number of your mark and advise whether the owner of the mark has changed since the registration issued. Typically, a maintenance application for a single class is $900 ($525 for each additional class) and includes the optional filing of a statement of continuous use. A renewal application for a single class is $1025 ($675 for each additional class), inclusive of all services, fees and government charges. See our comprehensive fee table below.
The following is a brief explanation of the documents you need to file to keep your U.S. registration alive.
(The “Madrid Protocol” an international treaty that allows applicants to file for trademark protection in multiple countries through a single application to a single office, for example, the USPTO. (If your registration is a Madrid Protocol registration, please see that section further below.)
Owners of non-Madrid Protocol U.S. registrations must file the following documents:
• A Declaration of Use and/or Excusable Nonuse is a declaration submitted by the trademark owner attesting to the of the mark or, if not in use in whole or in part, identifying the special circumstances that excuse nonuse. Business decisions not to use a mark, for example, due to decreased demand, do not excuse nonuse. A Declaration of Use (under §8 of the Trademark Act) must be filed in the 6th year following the registration date. For an additional fee, the USPTO allows a six-month grace period to submit the document. If the mark has been in continuous use for five years from the registration date, owners should also (but are not required to) file a Declaration of Incontestability under §15 of the Trademark Act.
• A Declaration of Use and/or Excusable Nonuse and an Application for Renewal under §§8 and 9 of the Trademark Act must be filed between the 9th and 10th years after the registration date, and between every 9th and 10th year thereafter, always calculated from the registration date. Again, for an additional fee, the USPTO allows a six-month grace period.
Madrid Protocol Registrations
Owners of International Registrations designating the United States through the Madrid Protocol must file the following in the USPTO:
• a Declaration of Use and/or Excusable Nonuse under §71 of the Trademark Act during the and 6th year following the registration date. If the mark has been in continuous use for five years from the registration date, owners should also file a Declaration of Incontestability under §15; and
• a Section 71 declaration on a date that falls on or between the 9th- and 10th-year anniversaries of the date on which the USPTO issued the certificate of extension of protection, and every 10th-year period thereafter.
International registrations must be renewed directly with the International Bureau of the World Intellectual Property Organization, rather than filing renewal applications with the USPTO.
Notes For All Registrations
Although Declarations of Excusable Nonuse exist, there are very few acceptable reasons for nonuse, and should the mark be of continuing interest, a new application should also be filed as a safeguard.
Should the maintenance or renewal application be audited, and goods or services need to be deleted there is a surcharge to comply with the USPTO requirements of deleting the goods and services that evidence cannot be provided of $350.00.
Declaration Of Incontestability
The Declaration of Incontestability is an optional, but very much recommended, filing by a trademark owner who has continuously used its mark for a period of five years. The declaration serves as conclusive evidence of the validity of the registered mark and the owner’s exclusive right to use it and, all other things being equal, strengthens the trademark owner’s rights. (See 15 U.S.C. §1065.) We recommended that a Section 15 Declaration be filed at the earliest possible date.
Unsolicited Third-Party Emails
From time to time you may receive unsolicited third-party emails that appear initially to come from the USPTO but are actually from private companies looking to take your money without giving you anything of value in return. If the email is not from our website or an address from @uspto.gov, the email should be deleted as spam.
Notice Of Acceptance Or Renewal
The USPTO will issue either a notice of acceptance and/or renewal or an office action within approximately one to two months after filing the maintenance/renewal documents. If the declarations/renewal are acceptable, the USPTO will send a notice of acceptance and/or renewal. If an office action is issued, the USPTO will state why a notice of acceptance and/or renewal was not issued, and may suggest remedies.
|United States Trademarks|
|Class or Item|
|Per Class||1st Class||Addl’ Classes|
|Filing New Trademark Application w/ Fixed Prosecution eTeas Plus|
|Filing New Trademark Application w/ Fixed Prosecution eTeas Standard|
|ITU Extensions/Allegations of Use/Statements of Use|
|Six (6) Month Extension|
|Dividing Trademark Application|
|Trademark Maintenance: §8/71 (Use) & §15 (incontestability)|
|Trademark Registration Renewal|
|Trademark Maintenance: §8/71 (Use Only)|
|Trademark Maintenance: §8/71 (Use) & §15 (incontestability) — BELATED|
|Trademark Registration Renewal — BELATED|
|Recording Title Changes|
|Petitions to Reinstate/Revive Application|
|Filing Opposition or Cancellation|
|First 30 Day Extension||0.00||200.00|
|First 60 or 90 Day Extension||200.00||200.00|
|Final 60 Day Extension||400.00||200.00|
|Taking Over Already Filed National or Madrid Application (Non-Substantive)|
|Amendment to Registration|
|Madrid Filing* (plus Disbursements)|
|Foreign Filing* (plus disbursements)|
|Plus Agent and Official Fees||1200.00||400.00|
|Additional Fee Notes:|
|Application Irregularity fee is $100.00 + $100.00 Services|
|Surcharge for deleting goods after Section 8 filed $250.00 + $100.00 services|
|Charges for appeal briefs $200.00 and + $100.00 for extension plus services|
|Oral hearing requests $500.00 additional fee plus services|
Maintain Your Registration With Our Help.
Located in West Windsor, Gordon E. R. Troy, PC, represents clients throughout the United States and across the globe.