Don't Lose Your Trademark! A Guide to Renewals & Declarations

Owning a trademark is like owning valuable property—you need to maintain it to keep it protected. Just as you wouldn’t ignore the upkeep of a physical asset, your trademark requires timely renewals and declarations to remain legally secure. Whether you’re in Los Angeles, Irvine, or anywhere in Orange County, understanding this process ensures your brand’s continued protection.

Understanding Trademark Renewals and Declarations

USPTO

When you register a trademark with the U.S. Patent and Trademark Office (USPTO), the journey doesn’t end there. Maintaining your registration requires periodic updates and declarations to confirm your continued use of the mark.

Key Filings: Section 8 & Section 9

Section 8 Declaration: Confirming Trademark Use (or Temporary Nonuse)

What Is It?

A Section 8 Declaration notifies the USPTO that your trademark is still in use or provides a valid reason for temporary nonuse. This declaration is mandatory to keep your trademark registration active.

You have two main options:

• Affirm that your trademark is in active use.

• Provide a legitimate reason for its temporary nonuse.

Why Is It Important?

If the USPTO does not receive a Section 8 filing, they may assume you’ve abandoned your trademark, leading to its cancellation. Filing this declaration ensures your brand remains legally protected.

What to Include:

For active trademarks:

• A statement confirming the mark’s active use.

• Details of where and how it is being used (e.g., product labels, advertising materials).

• A specimen showcasing its real-world application.

For inactive trademarks:

• A list of products or services where the trademark is not currently in use.

• The last date of use and an estimated timeframe for resuming use.

• A valid explanation for the temporary nonuse.

• Documentation demonstrating efforts to resume use.

Section 9 Renewal: Keeping Your Trademark Alive

What Is It?

Every ten years, trademark owners must file a Section 9 Renewal, alongside a Section 8 Declaration, to keep their registration active.

Why Is It Important?

Failure to renew your trademark registration results in cancellation, leaving your brand vulnerable to infringement or loss of legal protection.

What to Include:

For active trademarks:

• Confirmation of ongoing use.

• A list of goods or services where the mark is applied.

• A specimen proving its continued use.

For temporarily inactive trademarks:

• A detailed explanation of nonuse.

• The last use date and projected resumption date.

• A request to maintain the registration.

Section 15 Declaration: Claiming Incontestability

What Is It?

After five years of continuous use, trademark owners may file a Section 15 Declaration, granting their mark “incontestable” status—making it significantly harder for third parties to challenge its validity.

Why Is It Important?

This status provides an extra layer of security, reducing legal risks and reinforcing ownership rights.

What to Include:

• A $200 filing fee.

• A statement confirming continuous use for five years.

• An affirmation that no adverse legal rulings exist regarding your trademark.

• A declaration that no legal disputes are pending against your mark.

• A signed verification of accuracy.

Key Filing Deadlines: A Timeline Guide

Years 5-6: First Mandatory Filing

What to Do: File a Section 8 Declaration of Use.

When to File: Between the 5th and 6th years after registration.

Example: If registered on January 1, 2020, the filing window is January 1, 2025 – January 1, 2026.

Years 9-10: Renewal Time

What to Do: File both a Section 8 Declaration and a Section 9 Renewal.

When to File: Between the 9th and 10th years after registration.

Example: Using the above scenario, the deadline would be January 1, 2029 – January 1, 2030.

Every 10 Years Thereafter

What to Do: Continue filing Section 8 and Section 9 renewals.

Example: Next deadlines would be January 1, 2039 – January 1, 2040, then January 1, 2049 – January 1, 2050, and so on.

Grace Period: A Second Chance

Missed a deadline? The USPTO provides a six-month grace period, though it comes with an additional fee.

Why Staying Compliant Matters

Although filing declarations and renewals may seem like administrative tasks, they play a crucial role in securing your trademark rights. By staying proactive, businesses in Santa Ana, Los Angeles, and throughout California can safeguard their brand identity and avoid unnecessary legal challenges.

Need Help? Sari Law Firm Has You Covered!

Navigating trademark maintenance can be complex, but you don’t have to do it alone. Whether you’re a business in Irvine, a startup in Orange County, or an established company in Los Angeles, Sari Law Firm is here to help. Contact us today for expert trademark guidance and legal support!