Phoenix Trademark Attorney, Trademark Attorney Phoenix

Phoenix Trademark Renewal

TRADEMARK RENEWAL

We can assist with drafting and filing your trademark renewal documents,
completing post-registration USPTO audit requirements, and filing Declarations of Incontestability, which makes a registered trademark immune to challenge.

Specifically, our service includes:

  • A phone consultation with one of our trademark attorneys to discuss the trademark renewal process.
  • An appointment scheduled via email at a time convenient for you.
  • USPTO filing fee for 1 class of goods or services.
  • Flat fee for 1 trademark in 1 class of goods or services.
  • Flat fee for trademark section 8 / section 15 combination or trademark section 8 /section 9 combination.

Trademark Renewal Process

Trademark registrants are required to periodically renew their registrations. The first renewal comes due between the 5th and 6th year of registration. Subsequent renewals (after the first decade) occur every 10 years.

 

WHAT HAPPENS IF THE RENEWAL DOCUMENTS ARE NOT FILED IN A TIMELY FASHION?

If the appropriate renewal documents are not filed in a timely fashion, or if your trademark isn’t used commercially for three consecutive years, your trademark will be cancelled by the USPTO. If you don’t uphold these requirements, you could lose the rights to your trademark, including legal remedies if a third party commits trademark infringement.

If your trademark is canceled, it cannot be reinstated, and you need to apply for registration again. The USPTO offers a 6-month grace period to renew the registration, but petitioners need to pay an additional fee.

It is your duty to police and defend your trademark as long as you are the owner of the registration. That means that you need to challenge any person or company trying to file a trademark that could be overlapping your registration, and constantly check for infringement.

 

REQUIREMENTS TO RENEW A TRADEMARK REGISTRATION

TO MAINTAIN YOUR TRADEMARK REGISTRATION, YOU MUST:

  1. Continue to use your trademark in interstate commerce.
  2. File your registration maintenance documents with the USPTO, and pay the required fees, at the required times.
  3. Keep your correspondence information updated.

 

THE REGISTRATION MAINTENANCE/RENEWAL DOCUMENTS INCLUDE THE FOLLOWING:

A Declaration of Use. This is also known as Section 8 Affidavit, and it confirms that the owner is still using the trademark as it was originally issued.

Your first Section 8 renewal must be submitted between the five and six years after registration. This timeline starts from the moment of actual registration rather than your application date. If you fail to meet this deadline, you have a six-month grace period in which you can still file but there will be an additional fee.

A Declaration of Incontestability. Also known as Section 15 Affidavit, it states that your trademark cannot be challenged. While this is not mandatory, it provides further protection in case of future challenges or infringement.

At this point, if possible, you should also file a Section 15 to make the trademark incontestable. This will ensure your trademark cannot be challenged unless it becomes generic, falls into nonuse, or was obtained through fraudulent means. Incontestability requires that the following requirements be met:

  • Trademark must be registered on the Principal Register.
  • Continuous use in commerce for at least five years.
  • No adverse or pending legal proceedings involving trademark rights.

 

An Application for Renewal. Also known as Section 9 Affidavit, it should be filed between the 9th and 10th year of your trademark registration date. This also has a six-month grace period but with additional fees.  Another Section 8 declaration is due at this time. From that point on, you’ll need to submit a combined Declaration of Use and Application for Renewal every ten years after registration.

Section 9 Affidavit should be filed in the same manner for every future registration period, and it will grant trademark protection for an unlimited period (as long as you file the paperwork and have been using the trademark as it was issued).

 

TRADEMARK RENEWAL FEES

Here are the fees you can expect during renewal:

 

  • Section 8 Declaration: A per-class fee of $225 is required for each Section 8 Declaration of Use.
  • Section 15: A per-class fee of $200 is required for trademark incontestability.
  • Section 9 Renewal: Renewals have a per-class fee of $300. Combined Section 8 and Section 9 submissions are $525 per class.
  • Late fees: Renewals submitted during the six-month grace period will include additional per-class fees of $200.

 

Trademark renewal deadlines cannot be extended or waived. Failure to file maintenance documents prior to the six-month grace period expiration will result in an expired trademark.

The Phoenix Trademark Attorney understands how important it is to properly maintain your trademarks. For assistance with trademark renewal issues, please contact us today by filling out the form below.

 

PLEASE CONTACT US TODAY

Trademark Renewal Packages

To keep your trademark registration active, choose between our trademark renewal packages below.

Section 8 Declaration of Use

Between the 5 th and 6 th Year of Registration

$299 ATTORNEY FEE + $225 PER-CLASS GOVERNMENT FILING FEE*


Draft and file a verified statement that your trademark is in use in commerce in connection with the products/services listed in your trademark registration

Submit at least one current specimen of use per class of products/services listed in your registration

Pay the *government Filing Fees will be due when we file your renewal/maintenance documents. They are calculated based on the number of classes of goods/services listed in your registration.

Section 15 Declaration of Incontestability (Optional, But Highly Recommended)

Between the 5 th and 6 th Year of Registration

$299 ATTORNEY FEE + $200 PER-CLASS GOVERNMENT FILING FEE*


Prepare and file declaration of incontestability to make your mark immune from challenge and provide you with significant power and leverage over an alleged infringer

Pay the *government Filing Fees will be due when we file your renewal/maintenance documents. They are calculated based on the number of classes of goods/services listed in your registration.

Section 9 Renewal

Between the 9 th and 10 th Year of Registration and Every Subsequent 10 Years (Calculated from the Registration Date)

$299 ATTORNEY FEE + $300 PER-CLASS GOVERNMENT FILING FEE*


Prepare and submit a request that your registration be renewed for the goods/services identified in your registration

Pay the *government Filing Fees will be due when we file your renewal/maintenance documents. They are calculated based on the number of classes of goods/services listed in your registration.

Section 8 Declaration and Section 9 Renewal (Combined)

Between the 9 th and 10 th Year of Registration and Every Subsequent 10 Years (Calculated from the Registration Date)

$499 ATTORNEY FEE + $525 PER-CLASS GOVERNMENT FILING FEE*


Draft and file a verified statement that your trademark is currently in use in commerce in connection with the goods and/or services listed in your registration

Prepare and submit a request that your registration be renewed for the goods/services identified in your registration

Submit at least one recent specimen of use per class of goods/services listed in your registration

Pay the *government Filing Fees will be due when we file your renewal/maintenance documents. They are calculated based on the number of classes of goods/services listed in your registration.