Your US trade mark is registered: now you have to keep it alive!

Once a trade mark is registered, you may thing that the job is done. However, a US trade mark requires steps to be taken after registration to ensure it is properly maintained and remains registered.

Maintaining a U.S. trade mark registration requires the owner to file specific documents and fees at regular intervals with the USPTO. Failing to do so will result in cancellation of the registration.

Here is a detailed overview of post-registration maintenance requirements:

 1. Section 8 Declaration of Use

• When: Between the 5th and 6th year after registration
• What: A declaration under penalty of perjury that the mark is still in use in U.S. commerce.
• Includes:
  • Specimen of current use in commerce (one per class)
• Grace Period: 6 months (with additional fee)

 2. Optional Section 15 Declaration of Incontestability

• When: Can be filed after 5 years of continuous use from the date of registration (usually alongside the Section 8)
• Effect: Makes the registration incontestable, providing stronger protection and limiting challenges to validity
• Requirements:
  • Continuous and lawful use for 5 years
  • No pending legal proceedings

Often filed together with Section 8 for maximum protection.

3. Section 8 + Section 9 Renewal

• When: Between the 9th and 10th year, and every 10 years thereafter
• What:
  • Section 8: Declaration of continued use
  • Section 9: Renewal of registration
• Includes:
  • Specimen of use
• Grace Period: 6 months (with additional fee)