Showing continued use of your mark (Section 8)
Although you are required to show use of your mark before it registers, it is not sufficient to just use it that once and never again. The USPTO will protect marks that are in continued use. Therefore you must show use of your trademark no later than the sixth year after it was registered, then again before the tenth year, and again every 10 years after that.
There are three things you must file with the USPTO in order to "show use":
- A formal legally binding affidavit listing which items in your registration you are currently offering
- A proof of use (also known as a specimen) showing your trademark as it appears on your products or in connection with your services
- Government fee ($125 for each class of goods or services)
If there are any goods or services listed in the registration that you are not currently offering then you must delete those from the list. If you fail to delete the items no longer being used, you risk having the entire registration canceled.
The first time you file the Section 8, you must file it between the 5th and 6th anniversaries of the registration date. If you miss the deadline, you can still file within the 6-month grace period with the payment of an extra filing fee.
Renewing the registration (Section 9)
Not only must you show use of the mark, but you must also renew your registration every ten years. This is more expensive than the Section 8 affidavit, with a $425/class government fee. It should be filed between the 9th and 10th anniversaries of the registration, and like the Section 8 filing, there is also a 6-month grace period.
Other than the first time (the 6th year) you file your Section 8 affidavit, the renewal and use affidavit deadlines coincide (10th year, 20th year, 30th year, etc) and you’ll instead file a Combined Section 8/9 Filing.
Figuring out the renewal dates can be tricky, and if you miss the deadlines, the USPTO will cancel your registration. Here is an example of how to calculate.
Let’s say your trademark registration was issued on May 5, 2012.
- Earliest you can file the first Section 8: May 5, 2017
- Due date for first Section 8: May 5, 2018
- Last date to file first Section 8 with payment of additional fee: November 5, 2018
- Earliest you can file the first Combined Section 8/9: May 5, 2021
- Due date for first Combined Section 8/9: May 5, 2022
- Last date to file first Combined Section 8/9 with payment of additional fee: November 5, 2022
If you miss the traditional deadline, don't worry. You may still renew within the 6-month grace period with the payment of an additional fee. But if you miss the grace period deadline, your mark will be canceled.
Trademarkia makes it easy to remember the filing dates, so start it today!