About the Jewish Lawyer
Jeremy Peter Green Eche is a branding attorney and the founder of JPG Legal and Communer. He is the attorney of record for over 2,500 U.S. trademark registrations. In 2019, JPG Legal was ranked the #16 law firm in the United States by number of federal trademark applications filed. Eche graduated from Northwestern University School of Law on a full scholarship. Thomson Reuters selected him as a Super Lawyers Rising Star in Intellectual Property for 2021.
Eche has been profiled on USA Today, CNBC, CNN Money, NPR's Morning Edition, WIRED, MSNBC, Forbes, the New York Daily News, HLN, CNN Politics, DCist, ABA Journal, Vox.com, CNET, Mic.com, NBC News, Refinery29, the Globe and Mail, and several other news sources. Before becoming a trademark attorney, he was known for owning ClintonKaine.com and hosting his comics there during the 2016 election, before selling the domain.
Eche is based in Brooklyn in New York City. He formerly served as in-house General Counsel for Teamsters Local 922 in Washington, DC. He is married to Stephanie Eche, an artist and creative consultant.
You can contact him at email@example.com.
How Often Do You Have To Renew a Trademark?
People often ask me how often you have to renew a trademark in the United States. I wish the answer were simple. I could say “every ten years” and technically be correct, but that would be misleading because it doesn’t actually answer the question people are asking.
- Okay, That’s Nice, But How Often Do You Have To Renew a Trademark?
- Why Are the Language and the Timeline for Trademark Renewals so Confusing?
- Does the U.S. Trademark Renewal Timeline Start on the Registration Date or the Application Filing Date?
- Is the U.S. the Only Country that Requires a Trademark Renewal/Filing after Six Years? Why?
- When Is the Filing Window for a Trademark Renewal or Maintenance?
- When Should You Hire an Attorney to Renew Your Trademark Registration?
Yes, it’s true that you don’t need to file a Section 9 renewal for your U.S. trademark until 9 to 10 years after your trademark is registered, and every ten years after that. But there’s something else that you have to file between five and six years after you reach registration, and for some reason the USPTO doesn’t call it a renewal.
Instead, this six-year filing is called a Section 8 maintenance filing. This is the only time you have to file this strange maintenance document that isn’t technically a renewal. Then four years later, you have to file a Section 9 renewal along with another Section 8 filing at the same time. Then every ten years after that, you have to file another Section 8+9 renewal.1
Okay, That’s Nice, But How Often Do You Have To Renew a Trademark?
So for most people who are asking me how often a trademark needs to be renewed, the most helpful and least misleading answer is the following:
You need to file a maintenance document six years after your trademark reaches registration, then file a renewal four years after that, then file a renewal every ten years after that.
The exact deadline for the first Section 8 or Section 71 maintenance filing is on the six-year mark following the date your trademark reached registration (not the date you filed the trademark application). However, if you miss that main deadline, you have a six-month grace period during which you can still file your maintenance filing by paying an additional penalty fee.
The Section 9 renewal must be filed by the 10-year mark following registration, with its own six-month grace period following that. The 10-year renewal actually requires a double filing that consists of both Section 8 and Section 9 documents. Unfortunately, this means filing fees and grace period fees are both much higher for the 10-year filing than they are for the 6-year filing.
The good news is that after you’ve filed your combined Section 8+9 renewal ten years after registration, you are now only required to file a renewal every 10 years. The next Section 8 filing is due at the same time as your next Section 9 filing, 10 years after your last combined Section 8+9 renewal.
Why Are the Language and the Timeline for Trademark Renewals so Confusing?
It’s not the USPTO’s fault that the filing required six years after registration isn’t called a renewal. They’re simply using the language from the Lanham Act, a U.S. law passed by Congress and signed by President Harry Truman in 1946. Most modern trademark law in the U.S., including case law, leads back to this act.
Section 8 of the Lanham Act covers “maintenance” filings and Section 9 covers “renewals.” So the USPTO gets its peculiar language and timeline from those sections and the rest of the Lanham Act.
Does the U.S. Trademark Renewal Timeline Start on the Registration Date or the Application Filing Date?
If you’ve registered a trademark in a foreign country, you’re probably used to the idea that a trademark renewal is due ten years after the filing date for the application, not the date your trademark reached registration.
In most, perhaps all, non-U.S. countries in which I’ve handled trademark applications, the trademark certificate helpfully says the date that your renewal is due, exactly 10 years following the date the application was filed. The U.S. is the only country I know of that starts the renewal timeline when you reach registration, not when you filed.
It makes sense to start the timeline at the date of filing. In the U.S. and most other countries, your national trademark rights start on the day you filed the application, as long as you end up reaching registration.
For example, if you filed a U.S. trademark application on January 10, 2015 and you didn’t reach registration until January 10, 2020, your federal trademark rights began in 2015, not 2020. However, your renewal/maintenance timeline didn’t begin until 2020, meaning your Section 8 six-year maintenance filing isn’t due until 2026 and your Section 8+9 10-year renewal isn’t due until 2030.
Stalling the Trademark Application Process to Delay Required Renewal Fees
This means that if an applicant somehow stalls their U.S. trademark registration process, they can push back their maintenance and renewal deadlines without changing the effective date they started receiving federal trademark protection. This may be financially beneficial because it means the applicant can wait longer before paying all the filing and attorney fees required for maintenance and renewal.
As long as the applicant eventually reaches registration, they will still get protection from their original date of filing while also enjoying the other benefits of having a pending trademark application.
There are different ways for an applicant to stall a trademark application without paying any fees. If the applicant receives an office action, they can wait until the deadline to file a response rather than filing one immediately. The applicant can even file a response that they know will result in a second office action, and then wait out the clock on that second office action before filing a response that resolves the USPTO examiner’s issues with the application.
An applicant may also have their application suspended pending the outcome of a third party’s prior-filed application that may be confusingly similar to the applicant’s trademark. A trademark application can be suspended for many years in some cases. The application’s USPTO examiner will generally perform a suspension check every six months or so to see if the application should still be suspended. If you know that the prior-filed application has already been abandoned or reached registration, but you’re not in a hurry, you can avoid informing your USPTO examiner of this fact and wait for them to perform their regular suspension check when they get a chance.
I once had a trademark application reach registration more than five and a half years after I filed it. This means the six-year maintenance filing wasn’t due until 10.5 years after the application was originally filed!
Why does the USPTO start the renewal clock on the date of registration, unlike pretty much every other country? My best guess is because they require a “renewal” much sooner than other countries do. In the case above where my application took 5.5 years to reach registration, my six-year maintenance filing would have been due less than half a year after I reached registration if the renewal timeline began on the application filing date! Some applications take even longer than six years to reach registration, which would really throw the U.S. trademark renewal timeline off.
As you’ll read below, most other countries don’t require any “maintenance” filing; they only require 10-year renewals. So they don’t commonly face this issue of the registration date potentially being later than the six-year maintenance date.
Is the U.S. the Only Country that Requires a Trademark Renewal/Filing after Six Years? Why?
The United States is the only country I’ve encountered that requires a maintenance filing six years after registration. Other countries do not use confusing language regarding when to renew your trademark. As I mentioned above, in many other countries the trademark certificate itself gives you the exact date when your renewal is due, which is exactly 10 years after you filed your application.
The U.S. Requires Use in Commerce for Trademarks, Other Countries Don’t
Why does the U.S. have a six-year filing when other countries don’t? I believe this is tied to another unique requirement for U.S. trademarks: U.S. trademark applicants must generally be using their trademark in commerce before they can reach registration. In other words, your goods or services must be available to U.S.-based consumers at some point during the trademark application process before you can finish.
Most other countries that I’ve dealt with do not have a use-in-commerce requirement, meaning anybody who has a name they want to protect with a trademark registration can just register it without selling anything.
Both the Use-In-Commerce and Section 8 Maintenance Requirements Prevent “Trademark Squatting” in the U.S.
I prefer the U.S. system because if use-in-commerce weren’t required, trademark “squatting” would be very common in the way that domain name squatting is. I don’t have anything against cybersquatters (I was one myself), but it’s already hard enough to come up with a “trademarkable” brand name in the U.S. without having to worry about tons of people reserving names they have no intention of using in commerce. Some people use loopholes to this anyway, but their registrations will still be on shaky legal ground.
The main purpose of the six-year Section 8 maintenance filing is to make sure the owner of the trademark is still using the trademark in commerce. You’re not renewing your trademark, you’re just giving the USPTO evidence and your word that you didn’t stop using the trademark at some point after you reached registration.
I guess the USPTO feels that 10 years is too long for somebody to check in with them after reaching registration. It makes sense to me. Some of my clients even go out of business before their trademark reaches registration, despite having been using their trademark in commerce when we first applied. Should their “ghost” trademark really clog up the USPTO database and block new applications for 10 years? That seems extreme. So as a matter of public policy, I think the six-year maintenance requirement is warranted.
When Is the Filing Window for a Trademark Renewal or Maintenance?
The time window during which you can file a Section 8 maintenance or Section 9 renewal always begins one year before the main deadline. So if you reached registration on January 15, 2018, your maintenance filing window begins on January 15, 2023 — exactly five years after you reached registration — and ends January 15, 2024, one year later. You then have a six month grace period from January 16, 2024 to July 15, 2024 during which you can still file your Section 8 maintenance filing if you pay an additional grace period penalty fee.
In short, the filing window for your first Section 8 maintenance filing is 5-6 years following your registration date, plus an additional six month grace period. The filing window for your first Section 8+9 renewal filing is 9-10 years following your registration date, plus an additional six month grace period.
When Should You Hire an Attorney to Renew Your Trademark Registration?
I generally recommend hiring an affordable trademark attorney for your trademark renewal/maintenance filing right around when your one-year filing window begins. This gives the attorney time to make sure they gather sufficient evidence that you’re using your trademark in commerce. Additionally, if for some reason the USPTO has an issue with your maintenance or renewal filing, it’s easier to respond to their concerns if you’re still within your filing window, because there are situations where you may want to file a replacement Section 8 and/or 9 filing rather than responding directly to the USPTO’s post-registration office action.
Regardless, I certainly don’t recommend waiting until your main deadline or grace period deadline is coming up before attempting to renew your trademark. I have many clients who hire us two weeks before one of these deadlines because they tried to file it themselves and were unable to do so. This is usually either because the process was too complicated or because the trademark owner is based in a foreign country and thus must be represented by a U.S.-licensed attorney.
When the deadline is so close, it makes it much harder for our firm to work with you to gather the right evidence of use in commerce in order to meet the USPTO’s requirements. If you know your trademark maintenance or renewal window is about to open up, you may want to consider heading to our trademark renewal/maintenance form and getting started on your filing now.
1Applicants who registered their U.S. trademark under the basis of a foreign trademark registration using the Madrid Protocol will not be filing Section 8 or Section 9 filings. Instead, they will be filing a Section 71 filing at the six-year mark and another Section 71 filing 10 years after registration and every 10 years after that. If, like most applicants, you did not file your U.S. trademark application using a foreign registration as your basis, then you will be dealing with Section 8 and Section 9 filings.
Click Here to Learn More About Our
Trademark Registration Packages.
Follow Jeremy on Twitter.