What is trademark renewal (§8 & §9)?
The year 5–6 declaration and year-10 renewal windows tracked and prepared before they lapse the mark.
A US federal trademark registration doesn't expire quietly the way a domain name does — it expires because two specific maintenance filings were missed, and both run on windows most owners never write down anywhere. The first is a Declaration of Use under Section 8 of the Lanham Act, due between the 5th and 6th year after registration, which does one job: proves to the USPTO that the mark is still actually in use in commerce for the goods or services it's registered for. The second is a combined Section 8 & 9 filing, due between the 9th and 10th year and every 10 years after that, which is the actual renewal — Section 9 renews the registration itself, filed together with a fresh Section 8 use-declaration at that 10-year mark. Miss either window entirely, past its grace period, and the registration is cancelled or expired. There's no reinstatement — the owner has to file a brand-new application and start the clock over, losing the original filing date and everything built on it.
USPTO sends courtesy email reminders ahead of both deadlines, but the notice goes to whatever email address is on file, and that address is frequently a filing attorney's old email, a founder who's since left the company, or an inbox nobody checks anymore — the USPTO's own guidance is explicit that reminder delivery isn't guaranteed and the owner is responsible for the deadline regardless of whether a reminder ever arrived. For a foreign-domiciled owner without a US office watching the mail, that gap is exactly how registrations lapse: not through a legal dispute, but through a calendar nobody was keeping.
Who does what
Foreign-domiciled owners renew through a US-licensed attorney; CapEasy tracks the windows and prepares the filing file.
Who does what
| Your CapEasy team | Trademark renewal (§8 & §9), the reconciliations and reporting behind it, and the questions list that keeps it honest. |
| Your CPA or enrolled agent | Everything that carries a licence in United States — rendered exactly as written: issue compilation, review or audit reports — those are restricted to licensed cpa firms. |
| You | One conversation with one named person, and the decisions that are genuinely yours. |
Trademark renewal (§8 & §9) in United States
Section 8 (years 5-6) and Section 9 (year 10) are two different filings on two different clocks
Section 8 is a Declaration of Use — it doesn't renew anything, it proves the mark is still in use and is due between the 5th and 6th anniversary of registration. Section 9 is the actual renewal of the registration term, due between the 9th and 10th year and every 10 years after that, and by rule it's always filed combined with a fresh Section 8 at that same 10-year mark. An owner who only tracks 'renewal' and files just the Section 9 form at year 10 without the accompanying use declaration hasn't completed a valid combined filing.
The fee is per class, and the grace period costs extra per class too
Filing on time costs $325 per class electronically for either Section 8 alone or the year-10 combined filing (same $325/class rate applies to each component, so the combined filing runs $650/class total). Filing in the 6-month grace period after the deadline adds a $100/class surcharge on top. A registration covering five classes that slips into the grace period is paying that surcharge five times over, not once.
Missing both the deadline and the grace period cancels the registration outright, with no reinstatement path
If neither the on-time window nor the 6-month grace period is met, USPTO cancels (for a missed Section 8) or lets the registration expire (for a missed Section 9) — permanently. There is no late-filing fee or petition that revives it after that point; the owner has to file a new application and re-earn priority from scratch, which means re-clearing the mark and re-running the full examination and publication process as if the original registration never existed.
The specimen has to show current use, class by class — not a photo from the original filing
USPTO wants proof the mark is in use right now, not proof it was once in use when the application was filed years earlier. Each class on the registration needs its own current specimen, and a specimen showing use for a class that's actually been discontinued is a false statement to the agency — the honest move is to delete that class from the registration (which is allowed and doesn't affect the other classes) rather than force a specimen that doesn't reflect reality.
What your CPA or enrolled agent receives from us
- A registration-date calendar entry set the day the mark registers, with the Section 8 window (year 5-6) and every future Section 8 & 9 window (year 10, 20, 30…) flagged well ahead of the deadline.
- A current specimen for every class on the registration — dated recently, showing the mark actually in use on that class's goods or services (product photo, live service screenshot, packaging, signage).
- A class-by-class use confirmation: for each class, either current use is documented, the class is flagged for deletion because use has stopped, or an excusable-nonuse basis is drafted with the client's facts for the attorney to evaluate.
- A completed Declaration of Use filing pack (and, at year 10, the combined Section 8 & 9 pack) — specimens, class notes, prior registration data — assembled and ready for the attorney of record to review and sign in Trademark Center.
- A grace-period flag raised the moment a deadline is at risk of being missed, with the per-class surcharge made explicit before the window closes.
- A post-filing confirmation once the attorney submits — the updated USPTO record showing the registration remains in force — logged against the client's trademark file.
