TRANSCRIPT: Once a new application for a Trademark has been accepted there are several deadlines that the owner of the mark needs to be aware of – namely, the deadline for filing an affidavit or declaration of use under §8 of the Trademark Act and the deadline for filing a renewal application under §9 of the Trademark Act. (For our purposes here, I will be talking about deadlines that apply to a US trademark already in use in commerce. I will cover the applicable deadlines for intent-to-use applications and foreign trademarks in other videos).
The first deadlines a trademark owner should be aware of are those for the required periodic affidavits or declarations of use or acceptable nonuse of a trademark under §8 of the Trademark Act. This affidavit or declaration must be filed for the first time on or after the fifth anniversary and no later than the sixth anniversary of the date of registration or publication of a registered trademark. For example, if a trademark was first registered on July 1, 2015, the mark’s owner would need to file a six-year affidavit or declaration between July 1, 2020 and July 1, 2021.
Because an affidavit for Incontestability of a trademark under §15 of the Trademark Act may be filed once a mark has been in continuous use in commerce for five consecutive years, an affidavit under §15 and a §8 affidavit may be combined into a single affidavit or declaration (I will have another video covering incontestability affidavits). The filing fees for a combined affidavit is the sum of the individual filings: ($125 per class of goods/services covered by the mark for an online §8 affidavit and $300 per class for an online §15 incontestability affidavit).
In addition to the six-year affidavit, Section 8 affidavits or declarations must also be filed on or after the ninth anniversary and no later than the tenth anniversary of the date of registration or publication, and at the end of each successive ten-year period. For example, the owner of a trademark first registered on July 1, 2015 would need to file a ten-year affidavit or declaration between July 1, 2024 and July 1, 2025, during the last year of each subsequent ten-year period.
Premature filings of a §8 affidavit or declaration will not be accepted. Any fes submitted can either be held for a new affidavit or declaration filed at the appropriate time or refunded.
If the deadline for either the six-year affidavit or ten-year affidavit is missed, there is a six-month grace period during which these affidavits will be accepted. However, filing these affidavits or declarations during the grace period will incur additional fees ($100.00 per class for filing online, $200.00 per class for filing on paper). If a required affidavit or declaration is not filed before the end of the grace period, the trademark registration will be cancelled. It is important to note that the USPTO has no authority to waive the deadline to a §8 affidavit or declaration. The only remedy for failure by the end of the grace period is to file an entirely new trademark application and request that the new application be made “special” (or receive priority status in processing) in light of the inadvertent cancellation for failure to file the §8 affidavit or declaration.
The other deadline to be aware of is the application for renewal of a trademark registration under §9 of the Trademark Act. As with the §8 affidavit or declaration, a trademark renewal application must be submitted on or after the ninth anniversary and no later than the tenth anniversary of the date of registration or publication of a registered trademark, and at the end of each successive ten-year period. To return to our previous example, an owner of a trademark first registered on July 1, 2015 would need to file a renewal application between July 1, 2024 and July 1, 2025, and during the last year of each subsequent 10-year period.
Also like the §8 affidavit or declaration, premature renewal applications will not be accepted, and there is a six-month grace period if the initial deadline for filing a renewal application is missed. Again, filing a renewal application during the grace period will incur additional fees of $100.00 per class if filed online and $200.00 per class if filed on paper. It is important to reiterate here that, like the §8 affidavit, the USPTO has no authority to waive the deadline to file a renewal application. Failure to timely file will result in cancellation of the mark’s registration and require a new trademark application to reinstate it.
Because the deadlines for filing §8 affidavits and §9 renewal applications coincide, the USPTO allows for a combined §8 affidavit and §9 renewal application. As with the combined §8 and §15 affidavit, the fees for a combined §8 and §9 application are the sum of the individual filings ($125.00 per class for an online §8 affidavit and $300.00 per class for an online §9 renewal application).
Excluding deadlines to respond to actions from the USPTO or to file Petitions for Reconsideration or appeals (which will be covered in a later video), those are the relevant deadlines that all trademark owners need to be aware of. If you would like to contact us about filing a renewal application or an affidavit or declaration of use, you can find our information below. Thank you for watching/listening.
If you need assistance with filing a trademark renewal, we offer packages starting at $239.00 plus USPTO filing fees for Section 8 Declarations (5 year) and $389.00 plus USPTO filing fees for combined Section 8 and 9 Renewals (10 year).
Feel free to give us a call at (817) 677-1199 between the hours of 9:00 AM and 9:00 PM – Monday through Saturday or fill out the form at the link below.