Trademark Renewal

$100.00

SKU: FS-TM-RENEW Category: Tags: , , , , , ,

Description

Is it time to renew your Trademark?

What are the requirements for Trademark Renewal?

Due between the 5th and 6th anniversary of the date of your trademark’s registration:

  • Section 8, Declaration of Use
  • Section 15, Incontestability (Optional, but strongly recommended)

Due every 10 years after the anniversary date of your trademark’s registration:

  • Section 8, Declaration of Use
  • Section 9, Renewal

Failure to file these renewal forms will result in cancellation of your trademark!

Let L4SB’s licensed and experienced trademark attorneys help you!

What’s Included:

  • Case handled by a trademark attorney
  • Reviewing file and answering your questions
  • Assistance with the proper specimens for Section 8 Declaration of Use
  • Assistance with (and filing of) Section 9 Renewal and/or Section 15 Incontestability, as appropriate
  • Proper filing with the US Patent & Trademark Office

What’s not Included:

  • This service is provided for only one (1) trademark, for a Section 8 Declaration of Use and/or Section 15 Incontestability, or Section 8 Declaration of Use and Section 9 Renewal. No additional filings or assistance is provided.
  • This service covers up to the submission of the correct forms. It does not cover any work that may be needed after the filing, including but not limited to responses to Office Actions (i.e. the USPTO rejects your specimens for the Section 8 Declaration of Use).
  • This does not include Excusable Non-Use options. We can help, but we need to handle this in a different manner.
  • If your trademark already has an “Attorney of Record” (or AOR), the USPTO will refuse our submissions related to your trademark, without submitting a “Correspondence and Attorney/Domestic Representative Forms” (or CAR Form).  This can be easy or hard, depending on a few factors outside our control, including whether your previous attorney is responsive.  This can impact our ability to meet deadlines, and unless you pay the Option for us to handle the CAR Form, this will be your responsibility.  We are not responsible for any missed deadlines associated with the AOR or CAR Form.
  • Rush service is NOT included, unless you select it.  If you have a deadline within a week of your order, you must pay for the rush service.

Yes. That is an option on this form, and recommended.

 

Section 15 can only be filed, after your trademark has been active for at least 5 years.

It’s recommended, because Section 15 makes your trademark much stronger and more valuable.  This is because, if you are ever in a trademark dispute regarding your trademark, the opposing party cannot seek to cancel your trademark.  If you don’t have Section 15 filed, an opposing party can seek to cancel your trademark.

Why is this important?  One legal issue you should know about, is “legal priority”.  This goes to the “first user” of a trademark in the US.  Even if you’ve had your trademark for several years, if an opposing party can prove they were using (in commerce) a “confusingly similar” mark earlier than you (remember you needed to declare this in your trademark application), they can seek to cancel your trademark.  Section 15 would prevent this from happening, even if the opposing party was indeed using their mark in commerce earlier than you.

Yes.

The USPTO provides a 6-month grace period after each deadline for an extra fee. This means if you’re up to 6-months late, you can pay $100 per class code and still file your Section 8 Declaration of Use or Section 9 Renewal.

Once you pass the grace period, the USPTO will either cancel or expire your trademark registration, which will give others the ability to file trademark applications that can be confusingly similar to yours.

While it may be possible to regain your trademark rights, it is not without significant costs and possible problems depending on how long you go before trying to regain your trademark and the status of other confusingly similar trademarks.

If this is an issue, we recommend a trademark attorney consult to discuss the issues.

One of the advantages of hiring an actual trademark attorney (like we have at L4SB), is that we help clients navigate fraud and problems with the USPTO.  The USPTO, however, seems to have a lot of problems associated with fraud for clients who are not represented by an attorney.

This includes, apparently, people pretending to be attorneys.

Therefore, in 2025, the USPTO implemented more strict requirements for sending in forms related to existing trademarks that have a current “Attorney of Record” (or AOR) identified.  Specifically, the USPTO will ignore incoming forms and correspondence, unless it comes directly from either the owner or the existing AOR.  As trademark attorneys, the USPTO will ignore us, unless we are designated the AOR for an existing trademark.

If your trademark does not have an AOR, then this is not a problem.  We’ll become the AOR, and work with you as appropriate.

If, however, your trademark DOES HAVE an existing AOR, we will need you to tell the USPTO to revoke your existing AOR and substitute us as your AOR.  You do this by submitting a CAR Form to the USPTO.  We cannot do this ourselves, without your authorization.  Getting authorization is a pain.  We send in the form.  You then need to approve it and submit it back.  Once that’s done, we need to review it, and then submit it to your old AOR.  Your AOR must then approve it, send it back to us.  Then, we need to submit it to the USPTO.

If anything doesn’t work in this process — like your old attorney is dead or doesn’t otherwise respond — it can really hold things up.  This is why we cannot be responsible for AOR/CAR related delays or impacts to deadlines.  We also have a small fee to deal with this.