Trademark Maintenance Filings

To maintain your registration, you must file a Section 8 declaration and specimen of use between years 5-6 after registration and between years 9-10 after registration and each successive 10 year period.

For an extra fee of $100.00 per class, the USPTO permits you to file the declaration within the six-month grace period.

Failure to file a Section 8 Declaration results in cancellation of the registration.

Only available to marks registered on the Principal Register. To claim that a mark is incontestable, you must file a Section 15 declaration once the mark has been in continuous use in commerce for a period of five (5) years after the date of registration, or date of publication under § 12(c), and the mark is still in use in commerce. 

You must also affirm that there has been no final decision adverse to the owner’s claim of ownership of the mark for the goods or services listed in the Section 15 Declaration, or to the owner’s right to register the same or to keep the same on the register; and, there is no proceeding involving said rights pending and not disposed of in either the U.S. Patent and Trademark Office or the courts.

This declaration can be filed within one (1) year after the expiration of either any five-year period of continuous use following registration, or any five-year period of continuous use after publication under § 12(c).

Section 9 is an application for renewal of your trademark registration. Section 8/9 are filed together between years 9-10 after registration and each successive 10 year period.

Section 71 is a maintenance documents for trademarks registered via an extension of protection under the Madrid Protocol.

To maintain a Madrid Protocol extension of protection,  you must file a Section 71 declaration and specimen of use between years 5-6 after registration and between years 9-10 after registration and each successive 10 year period.

For an extra fee of $100.00 per class, the USPTO permits you to file the declaration within the six-month grace period.

A Section 71 Declaration can be combined with a Section 15 Declaration of Incontestability.

Failure to file a Section 71 Declaration results in cancellation of the extension of protection (i.e., cancellation of the registration).

A statement of use is required for applications filed based on “intent to use” the mark in US commerce. Filing a statement of use involves providing a specimen of use to the USPTO for each class of goods covered by your application. A statement of use also requires that you sign a declaration attesting to your use of the mark in commerce for all of the goods/services covered by the statement.