My Trademark Registration Lapsed

By Tom Speranza, J.D.

My Trademark Registration Lapsed

By Tom Speranza, J.D.

Trademark registrations issued by the U.S. Patent & Trademark Office (USPTO) confer valuable benefits to their owners, including nationwide rights in the registered mark. But if you don't make the required post-registration filings and pay the mandatory maintenance fees, the USPTO cancels the registration following a six-month grace period. When this happens, you must file a new application to obtain a registration.

Desktop computer with word "trademark" on screen

Required Post-Registration Filings

Unlike patents and copyrights, which have fixed terms and eventually expire, a U.S. trademark registration can remain effective in perpetuity so long as you continue to use your trademark in interstate commerce in connection with at least some of the goods and services associated with the mark in the registration.

There are two kinds of mandatory post-registration filings for trademarks registrations.

1. Section 8 Declaration of Use

You must file the Declaration of Use required by Section 8 of the Lanham Act with the USPTO between the fifth and sixth anniversaries of the registration date for your trademark. In the declaration, you confirm that the registration owner continues to use the trademark in interstate commerce in connection with the goods and services listed in the registration. If the mark is no longer in use for some of the goods and services, you use the form to modify the list of goods and services.

The Declaration of Use requires payment of a filing fee and a surcharge to the fee if you file within the six-month grace period following the sixth anniversary of the registration date.

2. Combined Section 8 Declaration of Use and Section 9 Application for Renewal

You must file the combined Declaration of Use and Application for Renewal required under Sections 8 and 9 of the Lanham Act between the ninth and tenth anniversaries of the trademark's registration date and then by every tenth anniversary thereafter.

The primary difference is that the Combined Form requires renewal of the registration for the applicable classes of goods and services for an additional 10 years and the payment of a registration fee for each class.

If you file the Combined Form during the six-month grace period following the registration's tenth anniversary, or any subsequent tenth anniversary, there is a surcharge to the applicable filing fee.

Failure to File

If a trademark owner fails to file a required post-registration form by the applicable deadline and does not resolve the situation within the six-month grace period following the deadline, the USPTO cancels the trademark registration.

There is no procedure to revive or reinstate a lapsed or canceled registration, except in the unlikely event you filed the required forms and paid the mandatory fees, but the USPTO mistakenly did not process them in time. Any request for reinstatement of a canceled registration due to the USPTO's error must take place within six months of the cancellation.

The only remedy for a lapsed or canceled registration because of the owner's failure to file post-registration forms is to reapply for the mark with a new application for registration.

Trademark Rights Following Cancellation

A canceled trademark registration does not mean that the trademark owner has lost all rights in the trademark. In the United States, unregistered trademarks, sometimes called common-law trademarks, derive their rights from use of the mark in the marketplace. If a trademark with a canceled registration has nevertheless remained in continued use both before and after the USPTO's action, the owner has rights in the mark in the geographic territories where it sells the trademarked goods and services and can stop other businesses from using confusingly similar marks, assuming the owner's use predates the infringer's.

What an owner loses with a canceled registration are the extra rights that a federal registration brings, including nationwide rights in the trademark, access to the federal courts, and an entitlement to statutory damages in certain circumstances.

Although the USPTO has tried to make the post-registration requirements for trademarks simple to understand and the forms easy to use, an experienced trademark lawyer can help you meet your filing deadlines and give you valuable advice about how to handle the tricky issues that arise when your use of a trademark changes following registration.

This portion of the site is for informational purposes only. The content is not legal advice. The statements and opinions are the expression of author, not LegalZoom, and have not been evaluated by LegalZoom for accuracy, completeness, or changes in the law.