A trademark lasts as long as you maintain it.
A federal trademark registration remains valid with maintenance filings, while the USPTO cancels registrations that miss deadlines. Before I file anything, I compare the registration to what you currently sell and make necessary adjustments, so you avoid extra fees.
If This Sounds Familiar…
You receive an official-looking notice from a company you’ve never heard of, requesting a fee to renew your trademark registration. Perhaps the fifth anniversary of your registration passed while you focused on building your business. Or maybe your registration still lists products you discontinued two collections ago.
Maintaining a trademark registration can be unglamorous, yet it’s crucial. This is where many registrations die: missed deadlines, exaggerated claims, and evidence of use that doesn’t meet USPTO requirements.
What I Handle
Filings: I manage all required filings, including the USPTO declaration of use due between the 5th and 6th year of registration (Section 8), the combined declaration and renewal due between the 9th and 10th year, and every 10 years thereafter (Sections 8 and 9). I track deadlines for your entire portfolio, including the six-month grace periods, and provide you with a calendar for easy reference.
Audit of Use: Before filing any documents, I carefully review each item listed in your registration against your current product offerings. If you no longer offer particular goods and services, I will remove them. These declarations are sworn statements, and because the USPTO randomly audits a portion of them, any unsupported claims could jeopardize your registration. I do not file declarations for goods or services that you cannot demonstrate are in continuous use.
Specimen Review: I review your proof of use to ensure it complies with USPTO regulations before submitting, so what we file is correct from the outset.
Record Verification: I confirm that the registration owner is accurate and flag any assignments or entity changes that need to be recorded. I also ensure that the USPTO has your current email address, as renewal reminders are sent to the address of record. Often, this is an outdated email address or a former attorney’s contact information, which can lead to missed deadlines.
Logo Drift: If the mark you currently use has diverged from the one you registered, I will let you know and guide you through your options before it becomes an issue at renewal time.
Incontestability: After five consecutive years of continuous use following registration, provided there are no pending challenges and no adverse rulings against the mark, you may file a declaration of incontestability (per Section 15). You can find more details in the FAQ below on what incontestability strengthens and what it does not.
Solicitations: If you receive a renewal notice that appears official, please send it to me before you make any payments or sign any agreements. Many of these are private solicitations with inflated prices, and some may even be outright scams. I screen these notices as part of my service to you.
Incontestability
A registration on the Principal Register presumes the mark is valid and belongs to you. However, someone can challenge this presumption. After five consecutive years of continuous use following registration, and if there are no pending challenges or rulings against the mark, you can file a declaration of incontestability (under Section 15). Once the USPTO accepts this declaration, it serves as conclusive evidence of the mark’s validity, your ownership, and your exclusive right to use it for the goods and services specified. Best practice is to file this declaration within one year after the five-year period ends. This submission generally accompanies the initial declaration of use and incurs a USPTO fee for each class of goods or services.
Why it is worth filing. This addresses the two main challenges that are most likely to succeed against a small brand. A competitor can no longer cancel the registration simply because the mark describes the goods, even if that argument would have been valid in the first year. Additionally, a challenger cannot cancel it based on earlier use elsewhere. For a brand that relies on a common word, an ingredient, a technique, or a geographical name, this distinction can mean the difference between a registration that can withstand challenges and one that must be defended repeatedly from the beginning. It also changes how a dispute arises: the opposing party starts with an established registration rather than a presumption, which shortens negotiations and increases the cost of initiating a confrontation with you.
What it does not do. Incontestable status does not automatically strengthen its legal protections; courts still consider how distinctive and well-known the mark is when determining whether another mark infringes it. Registration covers only the specific goods and services listed, and each item must independently demonstrate five years of use to gain protection. Additionally, incontestable status does not prevent challenges based on genericness, abandonment, functionality, or fraud. Specifically, if you cannot substantiate a sworn claim of use, it constitutes fraud that can invalidate the entire registration.
Furthermore, the rights of existing businesses that used a similar mark in their territory before your filing remain intact: these businesses maintain their territorial rights. An earlier registration also retains its priority over a later one. Importantly, registering a mark does not replace the requirement to declare use or renew the mark, nor does it protect you from being sued for infringing someone else’s rights. Marks on the Supplemental Register do not qualify for the same protections as those on the Principal Register.
How I handle it. When it makes sense, I submit the declaration with the five-year filing. I conduct an audit first. If you no longer offer or sell any goods or services, we need to remove them because incontestability is only as reliable as the mark’s actual use.
How It Works
Portfolio Intake: I retrieve your registrations from the USPTO records, verify their accuracy with you, and create a deadline calendar.
Audit: About six months before each renewal period opens, you will receive a review of your use that outlines exactly what each registration claims to be offered and sold. Let me know which products or services your business still offers, and I will highlight what to remove and explain why.
Specimens: You will provide samples that demonstrate the mark in use. I will review these specimens to ensure they comply with the regulations before filing.
Filing and Confirmation: After reviewing, I will file the declaration or renewal, send you the USPTO confirmation, and update the calendar with the next important date.
Fees
Each maintenance filing is a flat fee and includes a comprehensive use audit.
Declaration of Use (Years 5 to 6): $1,150. This includes a use audit, specimen review, record check, and, where applicable, a declaration of incontestability (Section 15).
Renewal (Years 9 to 10 and every 10 years after): $1,150. This includes an audit of use, specimen review, and record check.
Returning clients: $800 per filing for registrations I originally filed.
Additional classes: $350 for each class beyond the first.
Grace-Period Filings: These have the same legal fee; however, the USPTO imposes an additional surcharge per class for each filing made after the deadline.
Post-registration audits: If the USPTO selects your registration for an audit, I will quote the response separately.
USPTO Fees
USPTO fees are charged separately, on a per-class basis, and are non-refundable.
Declaration of use (Section 8): $325 per class, or $425 during the grace period
Declaration of incontestability (Section 15): $250 per class
Renewal (Sections 8 and 9 combined): $650 per class, or $850 during the grace period
Removing goods or services you no longer sell: no fee if I remove them before or during filing. After the USPTO receives the declaration, removal costs $250 per class, plus a $100 surcharge if the correction falls in a later period than the filing.
What This Doesn’t Cover
New Applications: If a registration has lapsed beyond its grace period, the USPTO will not revive it. You will need to start over with a new application; see Trademark Registration [link].
Enforcement: Monitoring for infringers and taking action against them. Trademark Monitoring, Enforcement & Disputes [links].
Foreign Renewals: Registrations in other countries are renewed according to their specific national rules. I will coordinate these renewals with associate counsel in the relevant countries, and fees will be quoted per country. International Services [link].
Start Here
Please bring your registration number, the notice that raised your concern, or simply the brand name. I can retrieve the rest from the USPTO records.
The maintenance intake form is the initial step in auditing your usage. If the owner of record matches your current business, and the trademark you are using aligns with the one you registered, you can account for every good and service listed, and there are no pending audits or office actions with the USPTO, I will respond within two business days with an engagement letter and a flat quote. No consultation required.
If any of those four criteria need more analysis, I will send a consultation link instead, as it usually indicates that work is needed before filing.
FAQs
When are my maintenance deadlines?
1
To determine your maintenance deadline, start counting from your registration date:
The first declaration of use is due between years 5 and 6.
The first renewal is due between years 9 and 10.
Subsequent renewals are required every 10 years after that.
You can find the registration date on your certificate and in the USPTO’s Trademark Status and Document Retrieval [link] system (TSDR). If you provide your registration number, I can send you the specific dates!
I missed the deadline! Is the registration gone?
2
Not necessarily. If you are within the 6-month grace period following the deadline, you can still file, though you will have to pay an additional USPTO fee. If you miss this grace period, the USPTO will cancel your registration, and you will need to file a new application. Therefore, it's crucial to track the dates.
I received a renewal notice quoting a fee. Is it from the USPTO?
3
If you got a notice in a paper envelope, it almost certainly isn’t from the USPTO. The USPTO communicates via email from uspto.gov addresses and does not send invoices. A paper notice quoting a renewal fee likely came from a private company, some of which are scams. Please forward it to me before you make any payment or sign any agreements.
Can I file the renewal myself?
4
Yes, you can. The USPTO’s forms are designed for owners to file directly. I created a self-audit guide called “Renew It” on Selvedge that walks you through deadlines, use audits, specimen definitions, and USPTO record verifications. However, be cautious with the declaration itself, as you sign it under penalty of perjury. If you claim goods that you no longer sell, it can jeopardize your entire registration. If the audit reveals anything you’re uncertain about, that’s when it’s best to consult me.
I stopped selling some of the goods in my registration. What happens to them?
5
You can remove those goods from your filing. Your registration will continue for the items you still sell. Removing goods you no longer sell doesn’t cost anything. However, if you keep them listed, it could cause problems. The USPTO may audit maintenance filings randomly and require proof of your claims. If you get an audit notice and can’t provide proof that you are selling those goods/services, there is a fee to delete them at that point.
Should I file for incontestability?
6
If your mark has been in continuous use for the goods it represents, the answer is yes. Filing for incontestability protects your mark from two common challenges that competitors might use against smaller brands. First, a competitor can no longer challenge your registration on the grounds that the mark merely describes the goods, even if that argument would have succeeded at the one-year mark. Second, a challenger cannot cancel your registration based solely on an earlier use of a similar mark. See above for more info re: incontestability.
The USPTO audited my maintenance filing. What should I do now?
7
An audit indicates that the USPTO wants proof of use for more goods and services than your submitted specimen covered. You will have a deadline to respond, and there are consequences if you don’t. Goods or services that you cannot prove will be removed, and failing to respond to the audit can jeopardize your registration. If you received an audit notice, please submit it through the intake form.
Do I need a consultation to renew?
8
Not if your records are in order. If the owner of record matches your current business, the trademark you are using is the same as what you registered, you can account for every good and service listed, and there are no pending USPTO audits or office actions, you can proceed directly to the maintenance intake form for engagement and a flat quote. No consultation is necessary. If any of these conditions present issues, you may need a consultation, as it could require additional work before you file, such as recording an assignment, resolving a logo question, or drafting a response.