Keeping your registration alive
Once you own a trademark registration, you must do a few important things to maintain that registration and keep it alive. First, you must use your trademark in commerce. Additionally, you must file certain documents at regular intervals to show that you're continuing to use your trademark. If you don't file these documents before the deadline, your registration will be canceled or will expire, or your extension of protection to the U.S. will be invalidated (if you filed via WIPO under the Madrid system). Exceptions to the requirement to use your trademark are rare.
Trademark Maintenance (U.S. – USPTO)
Maintaining a federal trademark registration requires periodic filings to show the mark is still in use and to keep the registration active.
1. Section 8 Declaration of Use (Between Years 5–6)
You must file:
- Section 8 Declaration of Use (showing the mark is still in use)
- Optional: Section 15 Declaration of Incontestability (if eligible)
Failure to file results in cancellation of the registration.
2. Section 9 Renewal + Section 8 (Every 10 Years)
At the 9th–10th year and every 10 years thereafter:
- Section 8 Declaration of Use
- Section 9 Renewal Application
USPTO requires specimen proof showing continued use for each class.
3. Proof of Use Requirements
You must submit at least one specimen per class showing:
- The mark as the consumer sees it
- In connection with the goods/services
Examples:
- Goods: product packaging, labels, website listings with purchase option
- Services: website advertising the services, brochures, signage
4. Nonuse and Excusable Nonuse
If the mark is not currently in use, you must:
- Provide a statement of nonuse, and
- Show that nonuse is excusable (e.g., supply-chain issues, temporary business closure)
5. Ongoing Monitoring
- Watch for conflicting marks (monitoring services or USPTO searches)
- Police the mark (stop infringing uses)
- Use the trademark consistently in the correct form
- Maintain quality control over licensees
6. Consequences of Missing Deadlines
- Cancellation of registration
- Loss of nationwide priority
- You may need to re-file and risk losing rights to others
USPTO allows a 6-month grace period, but with an extra fee.