Trademark renewal: Section 8/15 declarations and Section 9 renewals explained

Why a registration can expire

A US trademark registration is granted for ten years, but it is not self-renewing. The USPTO requires you to prove the mark is still in use at fixed anniversaries, and if you do not file the required declaration, the registration is cancelled even though you never received a bill. The law assumes that a mark no longer being used does not deserve protection, and the maintenance filings are the mechanism for that proof.

There are two maintenance filings on the standard cycle: the Section 8/15 declaration between the fifth and sixth anniversaries of registration, and the Section 9 renewal between the ninth and tenth. The USPTO tracks the registration date, not the filing date of the original application, and both windows open and close on that registration date. See the Section 8/15 page and Section 9 page for the anniversary windows.

The Section 8/15 declaration: year five to six

Between the fifth and sixth anniversary of registration, the owner must file a Section 8 declaration stating that the mark is in use in commerce, together with a specimen of current use, and pay the fee. A combined Section 8 and 15 filing also claims incontestability, which blocks most third party challenges to the mark's validity. Most owners file them together because the Section 15 claim makes the registration dramatically stronger for no extra effort beyond the fee.

The critical number is the five year anniversary. If the declaration is filed after the sixth anniversary but before the end of the six month grace period, it is accepted with an additional fee. After that, the registration is cancelled. There is no way to revive a Section 8 declaration once the grace period closes; the owner must file a new application and start over, losing years of seniority.

The Section 9 renewal: year nine to ten

Between the ninth and tenth anniversary, the owner files the Section 9 renewal, again with a specimen of current use and a fee. The Section 9 renewal keeps the registration alive for another ten years. Like Section 8, it has a six month grace period with a surcharge, after which the registration dies. The renewal also requires that the Section 8 declaration was properly maintained, which is why the two filings are connected: a skipped Section 8 in year five becomes a fatal problem at the Section 9 renewal in year nine.

The specimen: where most filings stall

The specimen is a real example of the mark in use with the goods or services: a product photo showing the mark, a website screenshot where the service is offered and the mark appears, or a label or tag. The USPTO rejects specimens that show the mark only in advertising without an actual offer for sale, or that do not display the mark at all. Preparing a proper specimen is the part of the maintenance filing that most often takes longer than expected, which is one reason the filing is started early in the window rather than on the last day.

Use requirements and exceptions

The maintenance filings are built on continued use in commerce. If the mark is not in use for some goods, the owner can delete those goods from the registration at the Section 8 stage, keeping the registration for the goods that remain in use. The USPTO allows an exception for excusable nonuse, such as a temporary suspension of business due to forces beyond the owner's control, but the excuse must be supported and the expectation must be to resume use. A mark abandoned in good faith, with no intent to resume use, cannot be saved by the exception.

Why the anniversary is so often missed

Trademark maintenance fails because it is a long-delayed, low-frequency obligation. The registration is obtained, the company moves on, and five or ten years later the notice window passes without anyone watching the calendar. There is no bill and no reminder from the USPTO; it publishes the cancellation only after the fact. Companies that hold a portfolio of marks across multiple jurisdictions multiply the risk, because each mark has its own registration date and its own windows.

LawDep treats each trademark's Section 8/15 and Section 9 anniversaries as separate calendar items computed from the registration date, and it tracks the maintenance deadlines in the IP register so a portfolio of marks shows one clear view of what is coming due. The USPTO trademark lookup in the IP workspace can pull a mark's status and compute the next renewal date directly from the registration. See the US compliance catalog for the full set of tracked filings.

Keep the ten-year cycle honest

The maintenance cycle repeats every ten years: Section 8/15 at years five and fifteen, Section 9 at years ten and twenty, and so on. A calendar that rolls the next anniversary forward automatically is the difference between a portfolio that compounds and one that quietly shrinks. LawDep rolls each renewal forward when it is completed, so the ten year horizon is always visible. Generate a free compliance calendar and map out your IP maintenance deadlines.

The Madrid protocol complication

A US registration that extends from an international registration under the Madrid Protocol follows a slightly different maintenance path. The Section 71 declaration replaces the Section 8/15 in some respects, and the renewal is handled through the international registration rather than directly with the USPTO. A company that holds both US-original and Madrid-based registrations therefore has two different maintenance regimes running side by side, each with its own deadlines and its own foreign-filing components. Tracking the two separately, and recording the basis of each registration, prevents the most common cross-border mistake: treating a Madrid extension like a domestic registration and missing the international renewal, which cancels the US extension along with every other designated country.

The practical rule is to record the basis, the registration date, and the next maintenance date for every mark in the register at acquisition. A trademark purchased in an acquisition often arrives with its maintenance dates buried in the closing files, and the portfolio transfer is exactly when the Section 8/15 window is most likely to be missed. Assigning the mark without also transferring the maintenance calendar is how a valuable registration quietly lapses in the first year of new ownership.

General information, not legal advice. Confirm your marks' registration dates and current USPTO fees with your IP counsel.