Maintenance and Renewals of Trademark Registrations
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 to advise you as to what maintenance and renewal obligations you have, you will 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 single class maintenance application is $800.00 ($425.00 each additional class and includes optional filing of statement of continuous use), and a single class renewal application is $925.00 ($575.00 each additional class), inclusive of all services, fees and government charges. Comprehensive fee table below.
The following is a brief explanation of the applications that you need to file to keep your U.S. registration alive.
Non-Madrid Protocol Registrations
(A “Madrid Protocol” filing is an international treaty that allows applicants to file for trademark protection in multiple countries through a single application with 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:
- a Declaration of Use and/or Excusable Nonuse is a declaration submitted by the trademark owner attesting to the use 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 any reason, for example decreased demand, do not excuse nonuse. The Declaration under §8 of the Trademark Act must be filed in the 6th year following the registration date. For an additional fee, the USPTO allows for a six-month grace period to submit the filings;
- If the mark as been in continuous use for five years from the registration date, owners may also file a Declaration of Incontestability under §15. An optional filing by a trademark holder who has used its mark continuously for a period of five (5) years, which serves as conclusive evidence of the validity of the registered mark and the owner’s exclusive right to use it. This is an optional filing that strengthens (all other things being equal) the trademark owner’s rights. (See 15 U.S.C. §1065.) It is highly recommended that a Section 15 affidavit be filed at the earliest possible date.
- 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 for 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 duringthe and 6th year following the registration date; 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.
For an additional fee, the USPTO allows for a six-month grace period for each declaration.
Note (1): International registrations must be renewed directly with the International Bureau of the World Intellectual Property Organization, rather than filing renewal applications with the USPTO.
Note (2): Although Declarations of Excusable Nonuse, there are virtually no acceptable reasons for nonuse, and should the mark be of continuing interest, a new application should also be filed as a safeguard.
Unsolicited Third-Party Emails
From time to time you may receive unsolicited third-party emails that appear initially to be from the USPTO but are actually from private companies looking to take your money without anything 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 and/or Renewal
The USPTO will issue either a Notice of Acceptance and/or Renewal or an Office Action within approximately 1 to 2 months after filing of 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 possibly suggest remedies.
|United States Trademarks|
|Class or Item|
|Filing New Trademark Application w/ Fixed Prosecution||1500||625|
|Intent to Use|
|ITU Extensions/Allegations of Use/Statements of Use||400||225|
|Trademark Maintenance: §8/71 (Use) & §15 (incontestability)||800||425|
|Trademark Maintenance: §8/71 (Use Only)||600||225|
|Trademark Maintenance: §8/71 (Use) & §15 (incontestability) — BELATED||1000||550|
|Trademark Registration Renewal||925||575|
|Trademark Registration Renewal — BELATED||1325||925|
|Extension Request for Notice of Opposition||300|
|Filing Opposition or Cancellation||2600||700|
|Taking Over Already Filed National or Madrid Application||500||400|
|Recording Title Changes||540||125|
|Dividing Trademark Application||575||200|
|Petitions to Reinstate/Revive Application||500||250|
|Rates include our services and government filing charges|