Your Trademark Can Expire Without You Knowing It

In the United States, the USPTO requires trademark owners to file maintenance documents at specific intervals after registration. These are not optional, and the deadlines are calculated from your mark’s registration date. 

The first required filing is a Section 8 Declaration of Use, due between the fifth and sixth year after registration. This declaration is required to demonstrate that the mark is still in commercial use. If it’s not submitted within the standard window, a six-month grace period is available, though additional fees will apply. If the deadline passes without a filing, the USPTO cancels the registration. 

Afterward, a combined Section 8 and Section 9 filing is due between the ninth and tenth years. The Section 8 Declaration confirms continued use again, while the Section 9 component formally renews the registration for another ten-year term. This combined filing repeats every subsequent tenth year for as long as the owner wishes to maintain the registration. There is no upper limit on renewals, provided the mark remains in use and deadlines are met.

The USPTO sends courtesy email reminders when maintenance is due, but the obligation to respond and properly maintain a trademark rests solely with the trademark owner. 

Another often overlooked cancellation risk is non-use. In the US, a trademark that has not been used in commerce (and for which there is no intent to resume use) is considered abandoned. Abandoned marks can be challenged and canceled by any party through a petition filed with the Trademark Trial and Appeal Board. In such cases, the petitioner must prove non-use and lack of intent to resume use for the registration to be canceled. 

The Trademark Modernization Act of 2020 introduced additional ex parte proceedings that allow third parties to petition for expungement or reexamination of marks that were never used or were not used before a specific date. These proceedings offer a faster and cheaper alternative to cancellation before the TTAB, though petitions remain relatively uncommon in practice.

In the EU, the cancellation standard is similar, but the structure is different. A registered EU trademark that has not been genuinely used for a continuous period of five years is liable to revocation upon the request of any third party. Unlike the US, the EU does not require proof of intent to abandon. Non-use alone is sufficient grounds for cancellation once the five-year period has passed. However, cancellation is not automatic; it must still be requested by a third party. 

Not all lapses come from deliberate inaction or negligence. Trademarks can also lapse as a result of several administrative failures you might not realize. 

For example, a business that changes its contact details without updating the correspondence address on file will stop receiving official notices from the USPTO. The USPTO is not responsible for undelivered correspondence, and a registration’s timeline continues to run regardless. 

Also, if an attorney of record leaves the practice entirely without properly notifying the clients and transferring responsibilities, renewal deadlines can go untracked. The registration continues in the former owner’s name, but they might be unaware of upcoming deadlines. 

Lastly, and most commonly, trademark portfolios that are transferred during a business acquisition or asset sale frequently carry maintenance obligations that may not be communicated to the new owner. A buyer who acquires a trademark without reviewing its registration history may be unaware of an upcoming deadline that falls right after the deal is closed. 

In each of these scenarios, the registration lapses not because the owner intended to abandon the mark, but because no one was monitoring it.

Keeping a trademark registration active requires more than just filing renewals on time. It requires proof of genuine use at each maintenance interval, which means owners should maintain records of how the mark appears on products, packaging, websites, and marketing materials. A specimen that does not match the registered mark, or one that fails to demonstrate commercial use, may result in a rejected filing. 

On top of that, owners should periodically review their registration to confirm that the goods and services listed are still accurate. If your trademark is no longer in use in specific classes, those should be removed at renewal, since they expose the registration to non-use challenges.

Lastly, owners should monitor registers for conflicting applications filed by third parties either manually or via a trademark monitoring service. Because a trademark that never enforces its rights against similar marks can lose its distinctiveness over time, weakening the owner’s ability to enforce it in the future. 

If the Section 8 Declaration is not filed within the standard window between the fifth and sixth year, a six-month grace period is available with an additional fee. If the grace period also passes without a filing, the USPTO will cancel the registration. Cancellation in this context is not reversible through a simple refiling. The owner would need to apply for a new registration, losing the original priority date in the process.

Yes. In the US, failure to file the required maintenance documents results in cancellation regardless of whether the mark is in active commercial use. Use alone does not preserve a federal registration. The registration is a separate legal status that must be maintained through timely filings.

The EU does not require proof of use at renewal. A registered EU trademark can be renewed every ten years by paying the renewal fee, without submitting evidence of use. However, any third party can apply for revocation of an EU trademark that has not been put to genuine use for five consecutive years. The absence of a use requirement at renewal does not protect an owner from a non-use revocation challenge.