What a US trademark needs at years 5, 6, and 10

Three dates decide whether a US registration survives. Here is what each one asks of you, and what happens if you miss it.

A US trademark registration does not renew itself. The USPTO asks the owner to prove, at fixed points, that the mark is still in use. Miss a window and the registration cancels, with no way back except a new application.

Year 5 to year 6: Section 8

Between the fifth and sixth anniversary of registration, you file a Section 8 declaration: a sworn statement that the mark is in use in commerce on the goods and services in the registration, with a specimen for each class. Anything no longer in use has to come out. Nothing can be added.

This is also the first time most owners meet the audit program. If a class lists four or more items, or two classes list two or more each, the USPTO may ask for proof of use on items it picks. The time to trim is before filing, not after the audit letter arrives.

The same window: Section 15

If the mark has been in continuous use for five years, with no adverse decision and no pending proceeding, a Section 15 declaration can be filed alongside the Section 8. It makes the registration incontestable, which closes off most grounds for a later challenge. It is optional and easy to forget.

Year 10, and every 10 years after: Sections 8 and 9

Between the ninth and tenth anniversary, the Section 8 declaration is filed again, this time combined with a Section 9 renewal application. The same questions apply: what is still in use, does the mark look the same, who owns it now. The cycle then repeats every ten years for as long as the mark is in use.

The statutory date is the date

Each window closes on the anniversary. Docket that date, not anything after it. Owners who plan to file late end up filing in the last week with a specimen that is not quite right.

What to have ready

Know which goods and services are actually in use today, in the United States. Have a current specimen for each class. Confirm the owner of record is still correct. With those three things the filing is routine. Without them, it is where registrations go to die.

If you have a registration coming due, send the number and we will tell you exactly what it needs.