Helped Clients Recover Over $25 Billion. Since 1979.
Helped Clients Recover Over $25 Billion. Since 1979.
A federal trademark registration with the U.S. Patent and Trademark Office (USPTO) stays alive only if its owner files the right maintenance documents on time. The Schenk Law Firm handles USPTO Section 8 declarations, Section 15 filings, and ten-year renewals, and we fix the ownership and record problems that can stand in the way.
Section 8 Declarations of Use
Between the fifth and sixth year after registration, the owner must swear that the mark is still in use and show how it’s used. We prepare the declaration and file it with the USPTO, with a current specimen for each class.
Section 8 and 15 Filings
Once a mark has been in continuous use for five years after registration, a Section 15 declaration can make the registration incontestable on several grounds. We file it alongside the Section 8 declaration when the owner qualifies.
Ten-Year Renewals
Between the ninth and tenth year, and every ten years after that, the owner files a Section 8 declaration and a Section 9 renewal together. We prepare both filings and confirm the goods and services still match the business.
Specimens and Goods Review
A registration should claim only the goods and services the mark is actually used for. We review the listing with you, gather current specimens, and delete items the business no longer offers.
Grace Period Filings
If the filing window has closed, the USPTO allows a six-month grace period with an added fee. We move quickly to file within that period before the registration is cancelled.
Ownership and Record Updates
The maintenance filing must come from the current owner. When a company has changed its name, sold the brand, or moved the mark to a new entity, we record the change with the USPTO so the filing is accepted.
I got a letter asking me to pay to renew my trademark. Is it real?
Private companies send official-looking notices that ask for payment to “renew” or “record” a trademark. The USPTO warns owners about these solicitations. Send it to us and we’ll tell you whether anything is actually due.
We stopped selling some of the products listed in our registration.
Those items should be deleted at the next maintenance filing. Claiming goods or services you no longer offer can put the whole registration at risk, and the USPTO audits some filings and asks for more proof of use.
Our company changed its name or sold the brand.
The filing has to be made by whoever owns the mark today. We record the name change or assignment with the USPTO first, then file the maintenance documents in the current owner’s name.
We missed the deadline.
If you’re still inside the six-month grace period, the filing can be made with a surcharge. After that, the registration is cancelled, and in most cases the only path back is a new application.
Does a registration last forever?
It can, as long as the mark stays in use and the maintenance filings are made on schedule.
Experience
David Lizerbram has practiced trademark law for more than two decades and has handled more than 850 trademark filings.
Deadlines Tracked
We track the maintenance deadlines for the registrations in our docket and contact the owner when a filing window opens.
Clear Quotes
We quote maintenance filings up front, with the USPTO filing fee and our legal fee listed separately.
Case Study
An electrical contracting company asked us to file the maintenance declarations for its registrations, including a logo registered for clothing. The USPTO picked the logo filing for a post-registration audit and asked for proof that the logo was in use on belts and jackets. We explained what the examiner needed, gathered photos of the branded goods from the client, and filed a response. The USPTO accepted the combined Section 8 and 15 declaration the next day, with every item of clothing still covered.
Case Study
A jewelry company’s combined Section 8 and 15 declaration drew a USPTO office action because its specimen didn’t show current use of the mark. We asked the client for up-to-date photos of the mark on its products, reviewed them, and filed a response two days later. When the USPTO followed up with a second request, we answered it the same day, and the USPTO accepted the declaration and acknowledged the incontestability filing.
Case Study
After a personal development company filed its combined Section 8 and 15 declaration, the USPTO’s follow-up notice went to an old contact and sat unread in a junk folder for weeks. Once the client forwarded it to us, we saw that the USPTO needed a new power of attorney signed by someone with authority to bind the owner. We had it signed electronically, updated the USPTO’s records so future notices come to us, and filed the response, and the USPTO accepted the declaration.
Case Study
A personal development company’s registration, held for more than a decade, covered live seminars, printed workbooks, and audio recordings. At the ten-year renewal, we deleted the class covering the recordings and supported the rest with a photo of a printed workbook and a screenshot of the client’s seminar listings. The USPTO accepted the declaration and renewed the registration for the seminars and printed materials.
Case Study
A restaurant group’s registration reached its first ten-year renewal window. We filed the Section 8 declaration and Section 9 renewal within days of the USPTO’s reminder, nearly a year before the deadline, and confirmed our firm as attorney of record so USPTO notices would come to us. The USPTO accepted the filings and renewed the registration for another ten years.
Client names and identifying details are withheld. Results depend on the facts of each matter, and past results don’t guarantee a similar outcome.
The Schenk Law Firm is based in North Park, San Diego. The USPTO registers trademarks for the whole country, and we handle USPTO maintenance filings for owners in every state.
Trademark searches, applications, and protection for brand names and logos.
Responses when the USPTO refuses or questions an application.
Stopping others from using a confusingly similar mark.
Extending a U.S. trademark to other countries.
Trademark vs. Copyright vs. Patent
How the three kinds of IP protection differ, and which ones a business needs.
Moving trademarks and other assets when a business is bought or sold.
Maintenance filings come due five, six, and ten years after registration. Send us your registration number and we’ll tell you which filing is due and when.
Contact us today to discuss your trademark renewal.
Request a ConsultationA Section 8 declaration states that the mark is still in use and is due between the fifth and sixth year and again with every ten-year renewal. A Section 9 renewal extends the registration for another ten years and is filed together with a Section 8 declaration.
No. It’s optional, and it’s available only after five years of continuous use following registration. It makes the registration incontestable on several grounds.
A specimen shows the mark as customers see it today. For products, that’s usually a photo of the label, tag, or packaging, or a web page where the product can be bought. For services, it’s usually a website or advertising that shows the mark with the services.
In most cases, no. Once the grace period passes, the USPTO cancels the registration. The owner then has to file a new application with a new filing date.