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Securing a United States trade mark registration is an important milestone for any business expanding into the American market. However, receiving the registration certificate is not the end of the process.
US trade mark owners must make periodic filings, demonstrate qualifying use and keep their registration details accurate. Missing a maintenance deadline can result in losing the registration—even where the business is still actively trading.
For UK businesses, the key is understanding that US maintenance involves more than simply paying a renewal fee every ten years.
The first deadline comes sooner than you might expect
For most US registrations obtained directly through the United States Patent and Trademark Office (USPTO), the first compulsory maintenance filing falls between the fifth and sixth anniversaries of registration.
The owner must file a Section 8 Declaration of Use and/or Excusable Nonuse. This confirms that the mark remains in qualifying use for the relevant goods or services, or explains the special circumstances relied upon to excuse temporary non-use.
Between the ninth and tenth anniversaries, the owner must submit a combined Section 8 declaration and Section 9 renewal application. Further combined filings are required at ten-year intervals. These deadlines run from registration, rather than the original application date.
| Filing window after US registration | Required filing for a registration not based on the Madrid Protocol |
| Between the fifth and sixth anniversaries | Section 8 declaration |
| Between the ninth and tenth anniversaries | Combined Section 8 declaration and Section 9 renewal |
| Between the nineteenth and twentieth anniversaries, and every ten years thereafter | Further combined Section 8 and Section 9 filings |
A six-month grace period is available after these deadlines, subject to additional fees. It should be treated as a fallback, rather than the planned filing date. Failure to file before the grace period expires will result in cancellation or expiry.
Use in the UK is not enough
US maintenance requirements focus on qualifying use in commerce under US law. Use solely in a foreign country does not satisfy that requirement.
This is particularly relevant to UK businesses that secured US protection before launching there. An intention to enter the American market does not, by itself, establish the use needed to maintain the registration.
Before a declaration is prepared, the owner should review which registered goods and services are actually being supplied under the mark in qualifying commerce.
What evidence must you provide?
Maintenance filings generally require evidence of use, known as a specimen.
Depending on the goods or services, suitable evidence might include photographs of genuine product labels or packaging, an appropriate sales webpage, or advertising that directly associates the mark with services actually provided.
The evidence must show real commercial use. Mock-ups, digitally altered product images and draft websites showing how branding might look are not acceptable substitutes. Webpage specimens must also include the URL and the date the page was accessed or printed.
Keeping an organised evidence file throughout the registration’s life can make maintenance considerably easier. Retain dated examples of packaging, website pages and marketing materials, alongside supporting commercial records.
Review every listed product and service
One of the most common mistakes is assuming that use for one product preserves protection for everything in the same class.
Although the initial filing generally requires one specimen per class, the declaration must accurately reflect use for all goods and services being retained, unless excusable non-use is properly claimed.
The USPTO operates a post-registration audit programme and may request evidence for additional items. An audit can therefore expose unsupported claims that were not apparent from the original specimen. Failure to respond can lead to cancellation, while deleting unsupported goods or services during examination can attract additional fees.
For example, a registration covering shirts, footwear and hats should not automatically be maintained for all three simply because the owner can demonstrate sales of shirts.
What if the business has temporarily stopped using the mark?
Excusable non-use may be available in limited circumstances, but it is not an automatic exemption.
The owner must explain the special circumstances preventing use. For Madrid-based registrations, USPTO guidance also requires an explanation of when use is expected to resume. Whether a particular interruption qualifies needs careful assessment.
If trading has stopped, seek advice before signing a declaration. A maintenance filing contains verified statements and should accurately reflect the business’s position.
Is “incontestable” status worth considering?
Owners of eligible marks on the Principal Register may be able to file an optional Section 15 Declaration of Incontestability after five consecutive years of qualifying use following registration.
Other conditions apply, including requirements concerning adverse decisions and pending proceedings. Where appropriate, the declaration can be combined with the first compulsory maintenance filing.
Incontestability strengthens the registration’s legal position against certain challenges. It does not make the mark immune from every challenge, and it does not replace compulsory use declarations or renewals. Marks on the Supplemental Register are not eligible.
Madrid Protocol registrations need separate attention
Where US protection was obtained through the Madrid Protocol, a different maintenance structure applies.
The owner must file Section 71 declarations with the USPTO between the fifth and sixth anniversaries of the US registration, between the ninth and tenth anniversaries, and at subsequent ten-year intervals.
Separately, the underlying international registration must be renewed through the World Intellectual Property Organization (WIPO) every ten years. Section 9 renewal is not the route for these registrations.
These obligations can run on different calendars: Section 71 deadlines are calculated from the US registration date, while international renewal runs from the international registration date. Renewing through WIPO alone does not satisfy the US declaration requirement.
Filing is not the final step
A maintenance submission may lead to questions, objections or an audit. Monitor the registration through the USPTO’s Trademark Status and Document Retrieval system until the filing has been accepted, and respond to any official correspondence within the applicable deadline.
Keep contact details current and maintain your own reminder system. The USPTO’s courtesy reminders do not remove the owner’s responsibility to file on time.
How Trademarkroom can help
Foreign-domiciled owners, including UK-based businesses, must be represented by a US-licensed attorney in trade mark matters before the USPTO. This requirement continues after registration.
Trademarkroom can help businesses plan their US trade mark maintenance, review the goods and services requiring protection and prepare for upcoming filings.
Your US registration can remain a valuable business asset for many years. Protecting it requires accurate records, genuine use and action well before the next deadline.
