Trademark Maintenance and Prosecution Deadlines: A USPTO Reference

If a deadline falls on a Saturday, Sunday or federal holiday, the USPTO treats a filing received on the next business day as timely.

Office action responses

For applications filed under section 1 (use or intent to use) or section 44 (foreign application or registration), office actions issued on or after December 3, 2022 must be answered within 3 months of the issue date. Before responding, the applicant may file one request for a 3-month extension, with the fee, so the total response period is at most 6 months from the issue date. The request must reach the USPTO on or before the original 3-month deadline. The same rule applies to final office actions: the extension also extends the deadline to file a notice of appeal.

Section 66(a) applications, filed through the Madrid Protocol, get 6 months to respond and no extension.

Office actions that need no response, such as examiner's amendments and suspension notices, don't start a response clock. Post-registration office actions follow the response period stated in the action. Docket the date the action gives you.

Statement of Use and extensions

When an intent-to-use application is allowed, the USPTO issues a Notice of Allowance (NOA). From the NOA issue date, the applicant has 6 months to file a Statement of Use, or to file a request for an extension.

• The first extension request is filed within 6 months of the NOA and gives one year from the NOA.
• Up to four more extensions are available, each for a further 6 months. Each must be received before the current period ends and must show good cause (ongoing efforts to use the mark).
• The maximum is 36 months from the NOA.

If a Statement of Use is filed but may need fixing, an "insurance" extension can be filed with or after it, as long as extensions remain. If no acceptable Statement of Use is filed in time, the application is abandoned.

Petition to revive

If an application is abandoned because a response or Statement of Use wasn't filed in time and the delay was unintentional, the applicant can petition to revive it:

• within 2 months of the issue date of the notice of abandonment, or
• if the notice wasn't received, within 2 months of learning of the abandonment and no later than 6 months after the date TSDR shows the application as abandoned.

After that window, a new application is usually the only path.

Section 8: years 5 to 6

Between the 5th and 6th year after the registration date, the owner must file a Section 8 declaration of use (or excusable nonuse), with one specimen per class. It must list only the goods and services still in use. Goods and services not in use must be deleted, and deletions after filing cost a fee.

Section 15: optional incontestability

If the mark is on the Principal Register and has been in continuous use for five consecutive years after registration (and meets the other requirements), the owner may file a Section 15 declaration. When it qualifies in the 5–6 year window, it's usually filed together with the Section 8 using the combined Sections 8 and 15 form (TMEP §1605).

Sections 8 and 9: years 9 to 10, then every 10 years

Between the 9th and 10th year after registration, the owner files a combined Section 8 declaration and Section 9 renewal. The same filing repeats every 10 years (years 19–20, 29–30 and so on).

Section 71: Madrid-based registrations

US registrations that came through the Madrid Protocol (serial numbers starting with 79) file Section 71 declarations instead of Section 8: between the 5th and 6th year, between the 9th and 10th year, and every 10 years after that, counted from the US registration date. The international registration itself is renewed with WIPO's International Bureau every 10 years from the international registration date, not through the USPTO.

Grace periods

Each Section 8, Sections 8 and 9, and Section 71 deadline has a 6-month grace period. Filing during the grace period requires an additional fee. If nothing is filed by the end of the grace period, the registration is cancelled or expires.

The USPTO sends courtesy reminder emails, but says filings are still due whether or not a reminder arrives. It recommends filing early in the window, so there is time to fix errors without extra fees.

After filing

A post-registration examiner reviews the filing, usually within one to two months, and issues an acceptance, a notice of renewal or acknowledgement, or an office action. Registrations can also be selected for a post-registration audit, which requires more proof of use. Failing to respond to a post-registration office action on a Section 8, 71 or 9 filing leads to cancellation or expiry.

Paravant calculates these deadlines from USPTO data, downloaded every 24 hours, and closes each one automatically when the USPTO record shows a responsive filing. Specifically:

• Section 8, Section 71 and renewal reminders continue through the 6-month grace period, not just until the first deadline.
• There's no separate Section 15 reminder. Firms usually file Section 15 with the 6-year Section 8 filing (or Section 71 for Madrid), so it's covered by that reminder.
• Office action, Statement of Use (including the final 36-month deadline), post-registration deficiency and audit, and Petition to Revive deadlines each have their own reminder schedule.
• Paravant covers USPTO filings only. It doesn't track Paris Convention priority dates or foreign registrations.

See the full list of deadlines and reminder schedules. Reminders can also go to clients by email and SMS from your firm. See client communication.