As a general rule and for obvious public policy reasons, the USPTO will not allow trademark owners to sit on trademarks if they are not being used. You must subsequently file a Section 71 declaration, specimen, and fee on a date that falls on or between the ninth (9th) and tenth (10th)-year anniversaries of the date on which the USPTO issued the certificate of extension of protection, and each successive ten-year period thereafter (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following each ten-year period). Also, USPTO staff cannot give any legal advice. 4. Once the USPTO recognizes an attorney with respect to the submission of a required post-registration filing, such as an affidavit under Section 8, an application for renewal under Section 9, etc., the USPTO will recognize only that attorney for all submissions related to that filing, such as responses to Office actions, petitions, etc., unless and until the registrant revokes and appoints a new power of attorney. The USPTO’s audit program requires trademark registrants and their attorneys to be extra vigilant when renewing their trademarks and … After submission of this form, it is not necessary to file a separate appointment using the Change Address or Representation form. Caution:  you may also receive unsolicited third-party mailings from private companies not associated with the USPTO around the time these filings are due. You must file a Section 71 declaration, specimen, and fee on a date that falls on or between the fifth (5th) and sixth (6th)-year anniversaries of the date on which the USPTO issued the certificate of extension of protection (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following the sixth (6th)-year anniversary date). Note: The owner of a registered extension of protection of an international registration to the United States must renew the international registration directly with the International Bureau (IB). You should respond to each point raised in the Office Action fully and completely. Once the USPTO recognizes an attorney with respect to the submission of a required post-registration filing, such as an affidavit under Section 8, an application for renewal under Section 9, etc., the USPTO will recognize only that attorney for all submissions related to that filing, such as responses to Office actions, petitions, etc., unless and until the registrant revokes and appoints a new power of attorney. Therefore, if you are an attorney and file this form, the USPTO will presume that you are now the registrant's attorney. Under Section 70(b) of the U.S. USPTO Trademarks promises to provide robust solutions for business owners regardless of their business type, ensuring complete autonomy over their business. 6. See the Summary of FY 2021 Final Trademark Fee Rule for more information. provides broad and vigorous protections in conjunction with a registered trademark You will receive either a Notice of Acceptance or Renewal or an Office action within weeks after filing Section 8. If you’re not sure how to answer a question, you may leave it blank. To claim that a mark registered on the Principal Register is now incontestable, you must file a Section 15 declaration once the mark has been in continuous use in commerce for a period of five (5) years after the date of registration, or date of publication under § 12(c), and the mark is still in use in commerce. Patent expiration date + fees calculator Need the expiration date of your U.S. utility patent? You must file the Combined Declaration, specimen, and fee on a date that falls on or between the fifth (5th) and sixth (6th) anniversaries of the registration (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following the sixth anniversary date). Search recorded assignment and record ownership changes. Response to Post-Registration Office action. Note: This does include registrations based on the Madrid Protocol. Note: Two-step authentication may be required in … Madrid Protocol & international protection, Checking application status & viewing documents, Checking registration status & viewing documents, Enforcing your trademark rights/trademark litigation, International intergovernmental organizations, Transferring ownership / Assignments help, Summary of FY 2021 Final Trademark Fee Rule, Combined Declaration of Use and Incontestability under Sections 8 & 15, 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, Section 7 Request for Amendment or Correction of Registration Certificate, Surrender of registration for cancellation, Declaration of Use and Excusable Nonuse under Section 71, Combined declaration of use & incontestability under Sections 71 & 15, Response to Post-Registration Office action. So, in the above example, you would really have until July 21, 2030 to f… 2. The scammer in the above example did get one thing right. 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. The online form is provided by the United States Patent and Trademark Office (USPTO) and should be completed and submitted electronically. Every application must have a filing basis, and every filing basis has requirements that must be met for your application to proceed to registration. 11. Trademark Act, if the international registration is not renewed, the IB will notify the USPTO that the international registration has expired. Holders of registered extensions of protection must renew their international registrations directly with the. If you have received an Office action from a Post-Registration examiner regarding your registration, you must respond within six (6) months of the issue date of the Office action. Find out how to protect intellectual property in other countries. 10. Thank you for visiting USPTO.gov . Failure to file the required Section 71 will result in cancellation of the registration and invalidation of the extension of the international registration to the United States. To prepare and file the electronic form, you must click on the form title that follows 9. at the top of this section. of these deadlines to registration owners who have provided a valid email address to the USPTO. A trademark that is registered with the USPTO offers many critical protections. Therefore, if you are an attorney and file this form, the USPTO will presume that you are now the registrant's attorney. File a trademark application and other documents online through TEAS. Combined Declaration of Use and Incontestability under Sections 8 & 15. Receiving your USPTO trademark renewal reminders via email. You may file a Combined Declaration of Use & Incontestability under Sections 71 & 15 only if you have continuously used a mark registered on the Principal (not Supplemental) Register in commerce for five (5) consecutive years after the date of registration. File a patent application online with EFS-web, Try the beta replacement for EFS-Web, Private PAIR and Public PAIR, Check patent application status with public PAIR and private PAIR, Pay maintenance fees and learn more about filing fees and other payments, Resolve disputes regarding patents with PTAB. Between the 5 th and 6 th years after registration you will need to file a Section 8 renewal and you should also file a Section 15 request for incontestability . Can you describe the problem? Use this form to divide a registration based on an application under Section 1 or Section 44 of the Trademark Act if ownership of the registration has changed with respect to some but not all of the goods and/or services. The filing of this form will automatically update the “Attorney of Record” and the "Correspondence Address" data fields in the USPTO's TSDR database. Please note that all official correspondence will be from the domain "@uspto.gov. Therefore, if you are an attorney and file this form, the USPTO will presume that you are now the registrant's attorney. The USPTO is currently improving our content to better serve you. Preview Section 15 Form [PDF] prior to accessing the electronic version through the numbered link, above. The cost of attaining a Trademark varies depending upon the filing basis selected, and which initial application form is used. The USPTO encourages paying fees online using the forms available on the Trademark Electronic Application System (TEAS). ", Madrid Protocol & international protection, Checking application status & viewing documents, Checking registration status & viewing documents, Enforcing your trademark rights/trademark litigation, International intergovernmental organizations, Transferring ownership / Assignments help, Trademarks: Maintaining a Trademark Registration, Summary of FY 2021 Final Trademark Fee Rule, 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, Declaration of Use and/or Excusable Nonuse under §8, Declaration of Use and/or Excusable Nonuse and an Application for Renewal under §§8 and 9, Declaration of Incontestability under §15, Trademark Electronic Application System (TEAS), Post-registration timeline - Section 66(a), Declaration of Use and/or Excusable Nonuse under §71, International Bureau of the World Intellectual Property Organization, Post Registration Response to Office Action, Trademark Status & Document Retrieval (TSDR), Owners of registrations not based on the Madrid Protocol must file a, If the registration meets the requirements of §15 of the Trademark Act, owners may additionally file an optional, Holders (owners) of registered extensions of protection to the U.S. (registrations based on the Madrid Protocol) must file a, Official forms for filing Combined Declarations of Use and Incontestability under §§71 and 15 are available through. Failure to file a Section 8 Declaration will result in cancellation of the registration.Note: The combined §§ 8 & 9 form (see below) is due every 10 years after registration.Note on representation: The USPTO considers powers of attorney to end upon either (1) the date of registration; or (2) the final acceptance or denial of a required post-registration filing. If you don't respond, the trademark registration will be cancelled. After your first renewal, trademark renewals are required every 10 years. Trademark Status and Document Retrieval (TSDR) will be unavailable beginning at 10:01 p.m., Saturday, November 14 and ending at 1 a.m., Sunday, November 15 ET. Check trademark application status and view all documents associated with an application/registration. 15 U.S.C. Refunds generally unavailable. After submission of this form, it is not necessary to file a separate appointment using the Change Address or Representation form. 5. Renewing your trademark registration (also called a "Section 9" filing) is required by the U.S. Patent and Trademark Office (USPTO) for trademark owners to maintain their trademark rights. It may be because the business changed its name, was sold, or for some other reason. This is called a Combined Section 8-9 Filing. If you have NOT continuously used the mark in commerce for five (5) consecutive years, you must still file a Section 71 Declaration. For the request to divide to be processed, you must also record an assignment with the Assignment Recordation Branch and pay the $100 divisional fee for each new registration created by the division. for an overview of the process steps and time frames for maintaining a trademark registration. Official forms for filing Combined Declarations of Use and Incontestability under §§8 and 15 are available through the Trademark Electronic Application System (TEAS). Renew or Maintain Your Trademark Registration. You may file a Combined Declaration of Use & Incontestability under Sections 8 & 15 only if you have continuously used a mark registered on the Principal (not Supplemental) Register in commerce for five (5) consecutive years after the date of registration. Preview Section 71 and 15 form [PDF] prior to accessing the electronic version through the numbered link, above. Common Misconceptions about Filing Trademarks for Norfolk Businesses Some of our fees are changing on January 2, 2021. For contact information of other areas at the USPTO, see below. Once the USPTO recognizes an attorney with respect to the submission of a required post-registration filing, such as an affidavit under Section 8, an application for renewal under Section 9, etc., the USPTO will recognize only that attorney for all submissions related to that filing, such as responses to Office actions, petitions, etc., unless and until the registrant revokes and appoints a new power of attorney. Since you must also show use of your mark every ten years, you will file a Declaration of Use and a Renewal at the 10 year mark, the 20 year mark, etc. See TMEP Section 1609.10(a) for information on correcting a USPTO error that would materially change the registration.Warning: Section 7 only provides for (1) a surrender of registration; (2) a new certificate due to a change in the owner's name and/or address; and (3) an amendment and/or correction of information printed on the certificate of registration. 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. Do not use this form if your application has not yet registered; otherwise, a different TEAS response form would be appropriate. We may have questions about your feedback, please provide your email address. For the latest information or to create a USPTO.gov account, review the Log in to TEAS and TEASi page. Do not attempt to file the PDF version because it is for viewing purposes only and not the entrance of any information. To prepare and file the electronic form, you must click on “Declaration of Incontestability of a Mark under Section 15” at the top of this section. Therefore, if you are an attorney and file this form, the USPTO will presume that you are now the registrant's attorney. How to Keep Your Trademark Alive . We would like to know what you found helpful about this page. §1141m. For new trademarks, owners will need to renew between the fifth and sixth year, and then again between the ninth and tenth year. After an application has been approved by the USPTO, the trademark becomes a valuable piece of property and companies must remain vigilant in order to protect it. Use the USPTO's Trademark Status & Document Retrieval system to check the status of your registration. This page explains the requirements of the audit and how to comply. We would like to know what you found helpful about this page. After submission of this form, it is not necessary to file a separate appointment using the Change Address or Representation form. Registered for Another 5 Years Once renewed, your trademark will remain registered until the 10 … So, for example, if your trademark registration issued on January 21, 2020, you would have to file the Renewal between January 21, 2029 and January 21, 2030. Contact us at (917) 268-7054 or info@jpglegal.com. Use this form to submit the required maintenance filings under Section 71 for a registered extension of protection (Madrid Protocol). We may have questions about your feedback, please provide your email address. However, to avoid cancellation you must file an affidavit of use or excusable nonuse within the sixth (6th) year after publication of the notice of the Section 12(c) claim in the Official Gazette, or within the six-month grace period after expiration of the sixth (6th) year, and also within one year before the end of each successive ten-year period following the date of registration, or within the six-month grace period thereafter. Once the USPTO recognizes an attorney with respect to the submission of a required post-registration filing, such as an affidavit under Section 71, the USPTO will recognize only that attorney for all submissions related to that filing, such as responses to Office actions, petitions, etc., unless and until the registrant revokes and appoints a new power of attorney. Here are some important things to know about the trademark renewal process, and what you can now expect from the USPTO. See our user guide to learn how to use the form. Section 73 itself does not require a separate filing, but rather only establishes the time for filing. Some of our fees are changing on January 2, 2021. You should expect either a Notice of Acceptance and/or Renewal or an. The most important requirement with this Section 9 Renewal (besides the fee) is the Section 8 Declaration of Use or Excusable Nonuse. §1141i, may only be filed in accordance with the specific time requirements outlined in Section 73. USPTO - United States Patent and Trademark Office, Post Registration Proof of Use Audit Program, After you file: check status and correct errors, Definitions for maintaining a trademark registration, Registration Maintenance/Renewal/Correction Forms, [PDF] prior to accessing the electronic version through the numbered link, above. Use this form to (1) surrender your registration voluntarily for cancellation under Section 7(e) of the Act in its entirety, i.e., as to all classes in the registration; or (2) surrender fewer than all classes in the registration. Claiming the benefits of the 1946 Act does not affect or alter the terms of the 1905 or 1881 Act registration. Please note that all official correspondence will be from the domain "@uspto.gov.". Therefore, if you are an attorney and file this form, the USPTO will presume that you are now the registrant's attorney. Trademark Act, if the international registration is not renewed, the IB will notify the USPTO that the international registration has expired. Do not attempt to file the PDF version because it is for viewing purposes only and not the entrance of any information. You must file a Section 8 declaration, specimen, and fee on a date that falls on or between the fifth (5th) and sixth (6th) anniversaries of the registration (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following the sixth (6th) anniversary date). Fees paid are generally not refunded by the USPTO. I.e., do not use this form to attempt to make additional information part of the Official record for a registration if no change would result to either the Trademark Database or the certificate of registration (for example, providing information concerning use by a related party or specifying the dates of use for specific goods and/or services within a class). (Section 15 does NOT apply to marks on the Supplemental Register). Section 7 Request for Amendment or Correction of Registration Certificate. The filing of this form will automatically update the “Attorney of Record” and the "Correspondence Address" data fields in the USPTO's TSDR database. For other assistance, please see our contact us page. Continued use for at least five years may be accepted as evidence that a brand has gained significance in the eyes of consumers. First, other businesses will be prohibited from using a confusingly similar mark. Serial numbers beginning with “79” are reserved for registrations under the Madrid Protocol. For an additional fee, the owner may file the declaration within the six-month grace period that follows. File a trademark application and other documents online through TEAS. After submission of this form, it is not necessary to file a separate appointment using the Change Address or Representation form. Section 9 of the Trademark Act, 15 U.S.C. The United States Patent and Trademark Office (USPTO) welcomes Tricia McDermott Thompkins as a new interim member of USPTO releases additional information on the COVID-19 Trademark Prioritized Examination Program In it, an examining attorney lists any legal problems with your chosen trademark, as well as with the application... Have a comment about the web page you were viewing? To determine whether your registration is based on the Madrid Protocol, locate the serial number of your underlying application on your certificate of registration. As such, the existing §15 Declaration form may be used regardless of the original basis for registration. Failure to update Ownership information:  Section 8 and Section 9 documents must be filed by the current owner. Use the forms here to file required registration maintenance documents. The USPTO requires that a registered trademark be renewed by certain dates. You may file this declaration within one (1) year after the expiration of either any five-year period of continuous use following registration, or any five-year period of continuous use after publication under § 12(c). 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. To prepare and file the electronic form, you must click on “Declaration of Use and/or Excusable Nonuse/of a Mark under Section 8” at the top of this section. If the declaration and/or renewal is acceptable, the USPTO will send a Notice of Acceptance and/or Renewal. 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. The two most commonly used filing bases are as follows: 1. You must subsequently file a Section 71 declaration, specimen, and fee on a date that falls on or between the ninth (9th) and tenth (10th)-year anniversaries of the date on which the USPTO issued the certificate of extension of protection, and each successive ten-year period thereafter (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following each ten-year period). This is important when you are working to build brand recognition and customer loyalty. In order to renew a trademark we file a combined Section 8 Declaration/Section 9 Renewal with the U.S. Patent and Trademark Office (USPTO). Also, you must file a renewal application within the same period (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following the registration expiration date). Fill out this form to engage JPG Legal for the Renewal or Maintenance of your registered U.S. trademark. Failure to file this document will result in cancellation/expiration of the registration.Note: Because the time for filing a ten-year Section 8 declaration coincides with the time for filing a Section 9 renewal application, use this combined §§ 8 & 9 form.Note on representation: The USPTO considers powers of attorney to end upon either (1) the date of registration; or (2) the final acceptance or denial of a required post-registration filing. Use this form either to (1) respond to an Office action that a Post-Registration examiner has issued; or (2) pay an additional fee related to a Post-Registration matter. Failure to file the required Section 71 will result in cancellation of the registration and invalidation of the extension of the international registration to the United States.