Annual Trademark Portfolio Review Checklist

By Casey Scott McKay · 2026-01-15

Once a year someone has to sit down and find out what actually happened to the portfolio, because the register does not update itself and the business does not report brand changes to counsel. This checklist runs that review in eleven phases, from pulling raw data out of TSDR, Madrid Monitor, WHOIS, and the assignment database, through reconciling the owner of record against the entity that actually exists, rebuilding the docket by hand from registration certificates instead of trusting the docket to audit itself, sweeping every good and service for real use, and finding the coverage gaps the business created since the last review. It gives current USPTO fee figures for every maintenance filing, the statutory windows and grace periods for Sections 8, 9, 15, and 71, the five-year Madrid dependency trap that turns a routine deletion into an international loss, and the deletion, amendment, and correction instruments that fix what the review finds. It closes with the prune-or-keep decision, the filing and proofreading sequence, and the close-out memo that makes next year's review take a day instead of a fortnight. A single invented matter, Wrenfield Outdoor of Boulder, Colorado, runs through every phase so the reader can see what finished work looks like.

IP and Technology > Trademarks | Checklist | Published 15 January 2026 - Updated 10 March 2026 | Casey Scott McKay - marksy.us

Summary. Once a year someone has to sit down and find out what actually happened to the portfolio, because the register does not update itself and the business does not report brand changes to counsel. This checklist runs that review in eleven phases, from pulling raw data out of TSDR, Madrid Monitor, WHOIS, and the assignment database, through reconciling the owner of record against the entity that actually exists, rebuilding the docket by hand from registration certificates instead of trusting the docket to audit itself, sweeping every good and service for real use, and finding the coverage gaps the business created since the last review. It gives current USPTO fee figures for every maintenance filing, the statutory windows and grace periods for Sections 8, 9, 15, and 71, the five-year Madrid dependency trap that turns a routine deletion into an international loss, and the deletion, amendment, and correction instruments that fix what the review finds. It closes with the prune-or-keep decision, the filing and proofreading sequence, and the close-out memo that makes next year's review take a day instead of a fortnight. A single invented matter, Wrenfield Outdoor of Boulder, Colorado, runs through every phase so the reader can see what finished work looks like.

Keywords: annual trademark portfolio review · trademark audit checklist · portfolio inventory reconciliation · tsdr file wrapper review · section 8 declaration deadline · section 9 renewal window · section 15 incontestability · chain of title verification · owner of record name change · specimen sweep · post registration audit program · deleting goods from a registration · section 71 madrid declaration · five-year dependency period · docketing buffer · watch notice triage · licensee quality control review · domain renewal audit · prune or keep decision · uspto maintenance fees

What this checklist is for

Once a year, run this review to catch lapses, gaps, and new filing opportunities. Those are the three things a portfolio does on its own while nobody is watching: it quietly loses coverage it used to have, it fails to cover things the business started doing, and it accumulates registrable assets nobody bothered to register.

A docket does not catch any of the three. A docket tells you what is due on properties it already knows about, under names it was given, for goods somebody typed in years ago. It cannot tell you that the company reincorporated, that the flagship logo was redrawn in 2024, that the cookware line dropped three SKUs, or that a licensee has been shipping under your mark for four years without an inspection. Only a human comparing the register against the business finds those.

Who should use it. In-house counsel or the outside firm that owns the maintenance docket; solo and small-firm practitioners running a portfolio for a growing client; brand and marketing leads who own the answer to "what are we actually selling under this name"; and deal counsel who need a clean portfolio before a diligence request arrives.

What you'll need before you start.

TSDR access and the ability to download the complete file wrapper, including native-resolution specimens, for every registration and pending application.
A current export from the docketing system: every property, owner name, class, filing date, registration date, next deadline, and responsible attorney.
The registration certificates themselves, not the docket's summary of them.
SKU-level or service-level revenue by year for the last six years, from finance, not from marketing.
The agreements binder: licences, coexistence and consent agreements, settlements, permission-to-use letters, and any judgment or consent decree that binds the company.
The corporate record: every entity name change, conversion, merger, and reorganisation since the earliest filing date in the portfolio.
A domain export with registrar, registrant, expiry date, and auto-renew status.
37 C.F.R. § 2.6 as it reads today, because every fee below moves.

What this checklist deliberately does not do. It does not design your programme. Tiering marks, building the maintenance budget, structuring redundant docketing, and reporting portfolio health to a board are the subject of the Trademark Portfolio Management Toolkit: Budgets, Audits, Docketing, and Reporting, which also explains why "annual" describes coverage rather than schedule and how to spread these phases across four quarters. Read it if you are building the function. Use this checklist to run the review.

The matter carried through every phase

Wrenfield Outdoor, Inc., of Boulder, Colorado, makes technical apparel and camp cookware. In-house counsel Priya Raman runs the 2026 review the week of 9 February. The portfolio: 31 U.S. registrations, 7 pending applications, one international registration with six designations, 24 domains, three licensees.

Five facts, none of which appear anywhere on the docket:

Wrenfield Outdoor, LLC converted to Wrenfield Outdoor, Inc., a Delaware corporation, on 1 July 2023. Eleven registrations still name the LLC as owner of record, and no change-of-name document was ever recorded.
Reg. No. 6,142,880 (TRAILKEEP, Class 21, registered 8 September 2020) covers "cutting boards." Wrenfield stopped making cutting boards in 2022.
International Registration No. 1,612,004 issued 4 June 2021 on the basis of Reg. No. 5,880,412 (WRENFIELD, standard characters, Class 25, registered 12 March 2021). The five-year dependency period runs to 4 June 2026.
Sawtooth Mercantile LLC has licensed WRENFIELD for enamelware since 1 April 2022. There is not one inspection record in the file.
Application Serial No. 98/512,004 for WREN FIELD GOODS published 4 November 2025. The opposition deadline passed on 4 December 2025 unnoticed. It registered on 20 January 2026.

The phases at a glance

| Phase | Name | Output | Typical effort | |---|---|---|---| | 1 | Set scope and pull the raw data | Reconciliation workbook | Half a day | | 2 | Reconcile the inventory | Exception list: register vs. market | 1-2 days | | 3 | Owner of record and chain of title | Recordation queue | 3-6 hours | | 4 | Rebuild the docket from primary sources | Verified deadline table | 4-8 hours | | 5 | The use and specimen sweep | Deletion list; dated specimen library | 1-2 days | | 6 | Find the gaps | New-filing memo with budget | 4-6 hours | | 7 | Find the lapses waiting to happen | Remediation list | 4-6 hours | | 8 | Conflicts, watch notices, enforcement ledger | Disposition log | 3-5 hours | | 9 | Agreements, encumbrances, deal-readiness | Compliance memo | 4-8 hours | | 10 | Price it, then prune or keep | Signed disposition table | Half a day | | 11 | File, proofread, close the loop | Stamped file; next-year calendar | Ongoing |

Phase 1 — Set the scope and pull the raw data

[ ] Write the scope in one sentence and name the person accountable for each phase, by name, not by department.
- Why. "Legal will handle it" is how a review dies in April. Wrenfield's memo reads: "Verify every U.S. and Madrid property against the business as it exists on 1 February 2026, and produce a funded filing plan by 6 March."
[ ] Download the complete TSDR file wrapper for every registration and application, including all specimens at native resolution and the assignment abstract.
- Trap. The TSDR document viewer compresses images. A specimen that looked fine on screen may be a 600-pixel screenshot when you need it as evidence.
[ ] Pull the Madrid Monitor record for every international registration and every designated Contracting Party, including the current status of each designation and the next renewal date.
[ ] Pull the USPTO Assignment Search record for every property and compare it to your internal chain-of-title file.
[ ] Export WHOIS or registrar records for all domains: registrant name, administrative contact, expiry date, auto-renew status, and registrar lock.
[ ] Ask the business for a plain-English list of every brand, sub-brand, product name, tagline, and service name in use today, plus everything launched or retired in the last twelve months.
- Why. This is the only document in the review that comes from outside the legal file, and it is the one that produces every finding worth having.
- Trap. Ask for it in a spreadsheet with a "first used in commerce" column and a "still in use" column. A narrative email is useless a year from now.
[ ] Open one workbook with one row per property and freeze it. Every later phase writes into a column of this workbook. The Trademark Portfolio Inventory Template gives you the column set.

Phase 2 — Reconcile the inventory against the business

[ ] Reconcile the docket export against TSDR property by property, and flag any registration or application that appears in one and not the other.
- Trap. Marks acquired in an asset purchase, or filed by a subsidiary's local counsel, are the ones that go missing. So are registrations that a predecessor firm docketed and never transferred.
[ ] Identify every mark in use that has no application and no registration, and record its actual first-use date, territory, and trade channels while the people who remember are still employed.
- Authority. Common-law rights are real but bounded by the trading area. Dawn Donut Co. v. Hart's Food Stores, Inc., 267 F.2d 358, 364 (2d Cir. 1959). Build the record now, using the Common-Law Priority Evidence Checklist.
[ ] Inventory the non-word assets separately: logos, product configurations, packaging, colour, sound, motion, and store or booth design.
- Why. These almost never appear on a trademark docket, and they are where unregistered value hides. Wrenfield's orange-and-slate handle colourway on TRAILKEEP cookware had been in continuous use since 2019 and appeared nowhere in the portfolio.
- Route product design and packaging through the Trade Dress Protection Checklist, and colour, sound, scent, and motion through the Non-Traditional Trademark Application Checklist.
- Authority. Product design trade dress is never inherently distinctive and always requires secondary meaning. Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 216 (2000). Colour is registrable but only on a showing of acquired distinctiveness. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995).
[ ] Check whether the company operates any standards, membership, or approved-provider programme that is legally a certification or collective mark rather than an ordinary trademark.
- Why. Wrenfield runs "Wrenfield Repair Certified" for third-party repair shops. A certification mark cannot be used by its owner on its own goods or services, 15 U.S.C. § 1054, and misuse is an express cancellation ground under 15 U.S.C. § 1064(5). Work it through the Certification and Collective Mark Application Checklist.
[ ] List cancelled registrations and abandoned applications from the last five years and note, for each, whether the loss was intentional.
- Trap. An abandonment nobody decided on is a process failure that will repeat. Find out which one it was: missed deadline, stale correspondence email, unpaid fee, or an unread office action.

Phase 3 — Confirm the responsible party and its exact legal name

[ ] Compare the owner of record on each registration, character for character, against the entity that exists today on the Secretary of State's records.
- Why. A Section 8 declaration must be filed by the owner of the registration. 37 C.F.R. § 2.160(b); TMEP § 1604.07. Wrenfield's eleven registrations naming the LLC would each have required an ownership showing at exactly the wrong moment.
- Trap. "Inc." versus "Corp.", a dropped comma, or a d/b/a used as the applicant name. The USPTO treats the recorded name as the owner until you tell it otherwise.
[ ] For each mismatch, decide whether the event was a change of name, a change of legal entity, or an assignment, and record the correct document.
- Authority. 15 U.S.C. § 1060(a)(3)-(4); 37 C.F.R. § 3.11, § 3.25; TMEP §§ 502.02(b), 503.03, 505. Recordation of an electronic assignment costs $40 for the first property and $25 for each additional property in the same document.
- Why recording matters. An unrecorded assignment is void against a subsequent bona fide purchaser without notice who takes for value, unless it is recorded within three months of the transfer or before the subsequent purchase. 15 U.S.C. § 1060(a)(4).
- Work each one through the Trademark Assignment Recordal Checklist.
[ ] Test every assignment in the chain for the two defects that void it: transfer without the goodwill of the business, and assignment of an intent-to-use application before a statement of use is filed, outside a transfer of the ongoing business.
- Authority. 15 U.S.C. § 1060(a)(1). The doctrine, and what it does to a buyer's priority date, is unpacked in Trademarks in the Deal: Chain of Title, Security Interests, and the Anti-Assignment-in-Gross Rule.
[ ] Verify the domicile address and the correspondence email on every property, and confirm that mail sent to it reaches a human who is still employed.
- Authority. 37 C.F.R. § 2.189 (domicile address); 37 C.F.R. § 2.23(b) (valid email address); 37 C.F.R. § 2.18(c) (the Office will not change the correspondence address on its own); TMEP § 609.02.
- Trap. A post office box or a mail-forwarding address is not a domicile, and the Office has issued show-cause orders on exactly that point. A foreign-domiciled owner must also be represented by a U.S.-licensed attorney. 37 C.F.R. § 2.11(a).
[ ] Send a confirmatory recordal for anything ambiguous rather than arguing about it later, and request an updated certificate under TMEP § 502.03 where the business will need one for a bank or a customs filing.

The five-minute check that saves a filing. Before any maintenance declaration goes out, open the registration certificate and the current corporate good-standing certificate side by side and read the two names aloud. Wrenfield's review caught eleven mismatches in twenty minutes and cleared them for $265 in recordation fees.

Phase 4 — Rebuild the docket from primary sources

[ ] Recompute every deadline from the registration certificate date, by hand, for at least the top tier of the portfolio — do not accept the docket's dates as verification of the docket.
- Why. A docket audit that reads the docket proves nothing. The registration date on the certificate is the only date that matters, and a single transposed digit propagates through four decades of deadlines.
[ ] Confirm the Section 8 window for each registration: the one-year period ending on the sixth anniversary of registration for the first filing, and the one-year period ending on each tenth anniversary thereafter.
- Authority. 15 U.S.C. § 1058(a)(1)-(2); 37 C.F.R. § 2.160(a). A six-month grace period follows, at $100 per class on top of the $325 per class base fee. 37 C.F.R. § 2.160(a)(3).
[ ] Confirm the Section 9 renewal window: within the year before the end of each successive ten-year period following registration, with the same six-month grace period.
- Authority. 15 U.S.C. § 1059(a); 37 C.F.R. § 2.182, § 2.184. $325 per class, plus $100 per class in the grace period.
[ ] For every Section 66(a) extension of protection, docket the Section 71 declaration off the U.S. registration date and the international renewal off the WIPO international registration date, and label the two rows so nobody conflates them.
- Authority. 15 U.S.C. § 1141k; 37 C.F.R. §§ 7.36-7.37; TMEP § 1613. Section 71 is $325 per class. WIPO renewal is a basic fee in Swiss francs plus complementary or individual fees per Contracting Party, with a six-month grace period carrying a surcharge of half the basic fee. Madrid Protocol art. 7; Common Regs. r. 30.
- Trap. These dates diverge by months or years. Wrenfield's Section 71 clock runs from 12 March 2021 and its WIPO renewal from 4 June 2021.
[ ] Docket the five-year Madrid dependency period as its own line item.
- Why. For five years from the international registration date, the IR depends on the basic U.S. application or registration. Cancel or narrow the base and the IR is cancelled or narrowed to the same extent, in every designated country. 15 U.S.C. § 1141j(a)-(b); Madrid Protocol art. 6(3). A three-month transformation window follows. 15 U.S.C. § 1141j(c).
- This is Wrenfield's most expensive finding, and it is entirely invisible on a normal docket. See Designating Countries Under the Madrid System and the International Trademark Toolkit.
[ ] Docket every statement of use and extension request deadline for allowed applications: six months from the notice of allowance, extendable in five six-month increments to a hard thirty-six-month outside limit.
- Authority. 15 U.S.C. § 1051(d); 37 C.F.R. § 2.89. Statement of use $150 per class; each extension $125 per class. The thirty-six-month limit is not extendable for any reason. Run these through the Statement of Use Filing Checklist.
[ ] Set three reminders per deadline — six months, ninety days, and thirty days out — routed to two different people, and confirm the second person exists and reads them.
- Trap. Never treat a USPTO courtesy reminder as a control. The Office sends them as a convenience; missing one is not an excuse, and the email goes to whatever address is on file, which Phase 3 just told you may be wrong. See Docketing Deadlines: Never Miss a Renewal.
[ ] Add non-USPTO deadlines to the same table: domain renewals, state registration renewals, CBP recordation expiry under 19 C.F.R. pt. 133, and every contractual renewal, notice, and termination date from Phase 9.

Phase 5 — The use and specimen sweep

[ ] For each registration, print the identification good by good and mark each entry in use, not in use, or unknown, sourced from finance data rather than from a marketing recollection.
- Why. This is the single highest-value hour in the review. An identification containing goods that were never sold, or stopped being sold, is the defect that converts a routine Section 8 into a cancellation risk.
- Authority. 15 U.S.C. § 1058(b)(1) requires the declaration to state that the mark is in use in commerce on or in connection with the goods and services recited in the registration, or to recite excusable non-use.
[ ] Delete every non-used entry in the declaration itself, where deletion is free, rather than after submission, where it is not.
- Authority. 37 C.F.R. § 2.161(c): deleting goods or services after submission of a Section 8 or 71 affidavit and before acceptance costs $250 per class.
[ ] Prepare for the post-registration audit on the assumption you will be selected.
- Authority. 37 C.F.R. § 2.161(b). The Office may require proof of use for up to two additional goods or services per class, at random. If you cannot prove use, the goods are deleted, and the record of the failure is public.
- Trap. A registrant who deletes goods only after being audited looks materially different from one who deleted them proactively — to an examining attorney, to a TTAB panel, and to a buyer's counsel.
[ ] Capture a dated specimen for every mark and every class, in .jpg or .pdf, showing the mark as registered, on or in connection with the goods, and file it with a contemporaneous note of where and when it was captured.
- Trap. A webpage screenshot with no URL, no date, and no ordering information is the most commonly refused specimen there is. The failure modes are catalogued in Specimen Refusals: Why the USPTO Rejected Your Proof of Use.
[ ] Compare the mark as used against the mark as registered, character for character and pixel for pixel.
- Why. A redrawn logo does not maintain a registration of the old logo, and a drawing amendment that materially alters the mark is not permitted. 15 U.S.C. § 1057(e); 37 C.F.R. § 2.173(b)(2); TMEP § 1609.02(a). Wrenfield's 2024 logo refresh meant Reg. No. 4,012,116 was maintainable only if the legacy logo was still in use somewhere — which, on packaging, it was.
[ ] Where a mark is genuinely out of use, decide between excusable non-use and letting the registration go, and write the reason down either way.
- Authority. 15 U.S.C. § 1058(b)(2); TMEP § 1604.11. Excusable non-use requires special circumstances that excuse the non-use and an intent to resume — not a business decision to pause. Three consecutive years of non-use is prima facie abandonment. 15 U.S.C. § 1127.
- Authority. The intent must be to resume use within the reasonably foreseeable future. Silverman v. CBS Inc., 870 F.2d 40, 46-47 (2d Cir. 1989). Contemporaneous, objective evidence can rebut the presumption. Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387, 1391 (Fed. Cir. 2010). See Use It or Lose It and the Trademark Abandonment Evidence Checklist.
[ ] Before signing anything, run the pre-signature control in the Trademark Fraud Claim and Self-Audit Checklist.
- Why. Fraud requires a false material statement made with intent to deceive, In re Bose Corp., 580 F.3d 1240, 1245 (Fed. Cir. 2009), and the claim rarely wins. That is cold comfort: the underlying inaccuracy cancels the registration anyway, and an internal audit that identified the problem, followed by a declaration swearing to it regardless, is the worst document in the file.

The Wrenfield trap, fully assembled. TRAILKEEP's Section 8 window opened 8 September 2025. Deleting "cutting boards" is correct and free. But WRENFIELD's Section 8 window opens 12 March 2026, and any narrowing of Reg. No. 5,880,412 before 4 June 2026 flows straight through to International Registration No. 1,612,004 in six countries. Raman's answer: file the WRENFIELD Section 8 and Section 15 unchanged in March, since Class 25 use is complete, and calendar 5 June 2026 as the first safe date for any restriction of the base registration.

Phase 6 — Find the gaps: what the business does that the portfolio does not cover

[ ] Compare the business's product-and-service list from Phase 1 against the classes and identifications you actually own, and list every uncovered offering.
- Wrenfield's 2025 launch of "Wrenfield Basecamp," a subscription rental service for apparel and camp gear, was covered by nothing. Three classes were missing: online retail store services in Class 35, rental of sports equipment in Class 41, and clothing rental in Class 45.
- Authority. Rental services are classified in the same class as the underlying service. Nice Classification, General Remarks. The reach consequences are explained in The Nice Classification System.
[ ] Draft each new identification from the USPTO ID Manual, not from the business's own words.
- Why. The base application fee is $350 per class. Using free-form text instead of an ID Manual entry adds $200 per class, and long free-form text adds $200 for each additional 1,000 characters. Precision is cheaper than prose.
- Use the Goods and Services Identification Checklist and, where the entry has to be custom, Drafting an Identification of Goods and Services.
[ ] List format gaps: a standard-character registration with no logo registration, a logo registration with no standard-character registration, a tagline in constant use with no filing, and a house mark with no registration in the classes where the sub-brands live.
[ ] List territory gaps against where the business actually sells and ships, then decide Madrid versus national filings for each.
- Use the Madrid Protocol Application Checklist. Remember Phase 4's dependency point before designating anything off a base you may need to narrow.
[ ] Clear every proposed new filing before you file it. A gap-filling application that draws a Section 2(d) refusal costs more than the search would have.
- Run the Trademark Clearance Search Checklist, then the Pre-Filing Trademark Application Checklist.
[ ] Decide the filing basis for each new application, and file intent-to-use applications promptly for anything on the roadmap, because constructive use priority runs from the filing date. 15 U.S.C. § 1057(c).
- The whole path from basis to certificate is in the Trademark Application and Prosecution Toolkit.
[ ] Price the gap-filling programme in one table — class count times $350, plus attorney time, plus the projected office-action rate — and take it to the business as a single funding decision rather than as a trickle of individual requests.

Phase 7 — Find the lapses waiting to happen

[ ] Review how the marks are used in copy: always as an adjective modifying a generic noun, never as a verb, never pluralised, never possessive.
- Why. Genericide is caused by the owner's own marketing more often than by anyone else's. The style rules, the policing programme, and the survey evidence that defends against a genericness claim are in Preventing Genericide and the Genericness Defense and Prevention Checklist.
- Authority. Genericness is a cancellation ground at any time, even against an incontestable registration. 15 U.S.C. § 1064(3).
[ ] Confirm that registration notice is used correctly: ® only on registered marks in the registered classes, TM or SM otherwise.
- Authority. 15 U.S.C. § 1111. Without the statutory notice or proof of actual notice, profits and damages are cut off for the period before notice.
[ ] Pull every live licence and ask the only question that matters: what did we inspect, when, and what is the record of it?
- Authority. A licence without actual quality control is a naked licence and forfeits the mark. Barcamerica Int'l USA Trust v. Tyfield Importers, Inc., 289 F.3d 589, 595-98 (9th Cir. 2002); FreecycleSunnyvale v. Freecycle Network, Inc., 626 F.3d 509, 515-19 (9th Cir. 2010). A licensee's use inures to the owner only where the owner controls the nature and quality of the goods. 15 U.S.C. § 1055.
- Wrenfield's Sawtooth licence had a model quality-control clause and forty-six months of nothing. Work every licence through the Trademark License Quality Control Checklist; the failure mode is described in Naked Licensing.
[ ] Identify registrations approaching the Section 15 window and file, because incontestability is cheap and the benefit is permanent.
- Authority. 15 U.S.C. § 1065; 37 C.F.R. § 2.167; TMEP § 1605. Five consecutive years of continuous post-registration use, no adverse final decision, no pending proceeding, and the affidavit filed within one year after any such five-year period. $250 per class. An incontestable registration cannot be attacked as merely descriptive. Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 196-99 (1985).
- Trap. Sign the Section 15 declaration as carefully as the Section 8. A false Section 15 will not by itself cancel the registration, Great Concepts, LLC v. Chutter, Inc., 84 F.4th 1014 (Fed. Cir. 2023), but it is a professional-responsibility problem and a gift to opposing counsel. See Section 15 Incontestability: When and How to File.
[ ] Assess exposure to the TMA ex parte proceedings on your own registrations before someone else does: expungement between the third and tenth anniversary of registration, 15 U.S.C. § 1066a; reexamination within the first five years for use-based registrations, 15 U.S.C. § 1066b. Each costs a challenger $400 per class. 37 C.F.R. § 2.91.
- Authority. Statutory non-use is also a standalone cancellation ground at any time after three years. 15 U.S.C. § 1064(6).
[ ] Ask honestly whether any mark is famous enough to support a dilution claim, and record the answer.
- Authority. Fame under 15 U.S.C. § 1125(c)(2)(A) means widely recognised by the general consuming public of the United States. Niche fame does not qualify, and the standard is rigorous. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1373 (Fed. Cir. 2012). If the answer is plausibly yes, build the record now using the Trademark Dilution Claim Checklist rather than assembling it under a briefing deadline. For Wrenfield the answer was no, and writing that down stopped a recurring internal argument.

Phase 8 — Conflicts, watch notices, and the enforcement ledger

[ ] List every watch notice received in the last twelve months and its disposition: acted, monitored, or ignored.
- Trap. "Ignored" is a legitimate decision and an illegitimate accident. Wrenfield's review found forty-one notices, thirty-eight correctly disregarded, two monitored, and one — WREN FIELD GOODS — never opened.
- Watch-service scope and triage are covered in Trademark Watch Services: What to Monitor.
[ ] Confirm someone is assigned to open watch notices within five business days, because the opposition window is thirty days from publication, extendable, and it does not wait.
- Authority. 15 U.S.C. § 1063(a); 37 C.F.R. §§ 2.101(c), 2.102; TBMP § 202.02. The first 30-day extension is free; a further 90-day or second 60-day extension costs $200; a final 60-day extension costs $400. A notice of opposition is $600 per class.
[ ] For every missed window, price the fallback: a petition to cancel at $600 per class, an expungement or reexamination petition at $400 per class, a coexistence approach, or doing nothing.
- Wrenfield priced a Class 25 cancellation at $600 in fees plus roughly $18,000 in professional time, against a competitor operating in a different channel. It filed a watch on the registrant instead and documented why. Compare routes in TTAB Proceedings: Opposition vs. Cancellation and, when litigation is on the table, Federal Court vs. TTAB.
[ ] Review live disputes — TTAB proceedings, district court cases, UDRP filings, and outstanding cease-and-desist correspondence — and record for each the current posture, the next deadline, and the settlement position.
[ ] Audit the domain and platform layer: expired domains, lapsed auto-renew, defensive registrations nobody renewed, marketplace listings, and social handles.
- Wrenfield's wrenfield.co lapsed on 14 January 2026 and was picked up by a reseller within a day. Recovery routes are compared in UDRP vs. Federal Lawsuit and Cybersquatting and the ACPA; the filing mechanics are in the UDRP Complaint Checklist.
- Trap. Turn auto-renew on for every domain that matters and put the renewal dates in the same table as the trademark deadlines. A $14 lapse costs $1,500 in UDRP fees to undo, and only if you win.
[ ] Confirm the CBP recordation status of every mark worth recording and diarise the expiry.
- Authority. 19 C.F.R. pt. 133. Recordation is available only for marks on the Principal Register. See the Anticounterfeiting Program Checklist.
[ ] Sanity-check enforcement consistency. A portfolio that objects to one competitor and tolerates six others has weakened its own strength evidence. The escalation ladder is in the Brand Enforcement Toolkit.

Phase 9 — Agreements, encumbrances, and deal-readiness

[ ] Locate a fully executed original or signed PDF of every licence, coexistence agreement, consent agreement, settlement, and permission-to-use letter, and log its term, renewal date, notice period, and termination triggers into the Phase 4 deadline table.
[ ] Read every agreement for restrictions on your own use: territory, channel, class, presentation, and co-branding limits. Then confirm the business is honouring them.
- Trap. Coexistence agreements are signed by lawyers and breached by marketing departments that never saw them. Circulate a one-page summary of every live restriction to the brand team annually.
[ ] Confirm compliance with any judgment, consent decree, or injunction that binds the company, including presentation and territory restrictions.
[ ] Identify every security interest touching the marks and confirm what was recorded where.
- Why. Wrenfield's 2024 credit facility granted Front Range Bank a lien on the trademarks. A UCC-1 was filed in Delaware; nothing was recorded with the USPTO under 37 C.F.R. § 3.11. That is a diligence finding waiting to happen, and it is cheaper to fix in February than during a term sheet.
[ ] Confirm the correct royalty flows in both directions and that someone is invoicing and receiving them.
[ ] Run the portfolio against a buyer's eye once a year, using the Trademark Due Diligence Checklist and, for the transaction view, Trademark Due Diligence in Mergers and Acquisitions.
- Why. Every defect above is found eventually. The only variable is whether you find it or the buyer's counsel does, and the price of the second option is a purchase-price adjustment.

Phase 10 — Review the current rules and fees, then decide what to keep

[ ] Pull 37 C.F.R. § 2.6 and the USPTO fee schedule as they read today and update every figure in your budget model.
- Trap. Fees moved substantially on 19 January 2025, and the TEAS Plus and TEAS Standard tiers were replaced by a single base application fee with surcharges. A budget built on pre-2025 numbers understates a multi-class renewal cycle by hundreds of dollars per class.
[ ] Confirm the payment mechanism works before the week of the deadline: deposit account balance, card on file, or EFT authorisation.
[ ] Build the ten-year cost of each registration and set it against what the mark does for the business. A single-class U.S. registration carried through one decade costs roughly $900 in government fees alone — $325 for the Section 8, $250 for the optional Section 15, and $650 for the combined Sections 8 and 9 — before professional fees, office actions, or watch subscriptions.
[ ] For each candidate, choose one of four dispositions and write the reason in one sentence: maintain in full, narrow, monetise, or let lapse. The economics behind each are worked through in the Trademark Portfolio Management Toolkit.
[ ] Before abandoning anything, get written confirmation from a named business owner that the mark is out of the market and will stay out.
- Trap. The pruning list is built from the docket, and the docket does not know what the business is selling. No verbal approvals.
[ ] Name what a lapse actually forfeits, so the decision is made with open eyes: the presumptions of validity and exclusive right under 15 U.S.C. § 1115(a); nationwide constructive use priority under 15 U.S.C. § 1057(c); constructive notice under 15 U.S.C. § 1072; the ® notice predicate for monetary recovery under 15 U.S.C. § 1111; incontestability and the banked years toward it under 15 U.S.C. § 1065; and CBP recordation eligibility under 19 C.F.R. pt. 133.
- What survives is common-law rights in the actual trading area — real, bounded, and expensive to prove. Where Your Trademark Rights End explains how bounded.

Phase 11 — Prepare, proofread, file, and close the loop

[ ] Prepare each filing on the current USPTO form through a MyUSPTO account and have a second person proofread the registration number, the owner name, the class list, the goods deleted, the dates, and the specimen before signature.
- Templates and mechanics: the Section 8 Declaration Template, Filing a Section 8 Declaration of Continued Use, and the Section 8 & 9 Renewal Checklist. The deadline structure is summarised in Trademark Renewal Deadlines Explained.
[ ] Confirm the signatory has authority: a person with legal authority to bind the owner, a person with firsthand knowledge and authority to act, or an attorney of record. 37 C.F.R. § 2.193(e)(1); TMEP § 611.03(a).
[ ] File, then save the filing receipt and the stamped confirmation to the matter file the same day, and update the docket with the acceptance date once the Notice of Acceptance issues.
[ ] Diarise the response window for any post-registration office action or audit inquiry the moment it arrives, and treat a deficiency notice as a live deadline, not correspondence. 37 C.F.R. §§ 2.163, 2.164.
[ ] File the Section 7 corrections the review produced — $100 per request for an amendment or correction to a registration under 37 C.F.R. § 2.173 — and record the assignments and name changes from Phase 3.
[ ] Write a two-page close-out memo with three columns: what we found, what it costs to fix, what happens if we do not.
- Why. A finding with no price and no consequence does not get actioned, and an unactioned audit is worse than no audit — it is a documented record that the owner knew.
[ ] Calendar next year's review as a fixed date, assign the phases now, and note the three things that were hardest to obtain this year so somebody starts asking for them in January.

Deadlines at a Glance

| Filing | Window | Grace period | Fee (electronic) | Authority | |---|---|---|---|---| | First Section 8 declaration | Year before the 6th anniversary of registration | 6 months, +$100/class | $325/class | 15 U.S.C. § 1058(a)(1); 37 C.F.R. § 2.160(a)(1) | | Section 15 declaration | Within 1 year after any 5-year period of continuous post-registration use | None | $250/class | 15 U.S.C. § 1065; 37 C.F.R. § 2.167 | | Combined Sections 8 & 9 | Year before each 10th anniversary of registration | 6 months, +$100/class each | $325 + $325/class | 15 U.S.C. §§ 1058(a)(2), 1059(a); 37 C.F.R. §§ 2.160, 2.182 | | Section 71 declaration (Madrid) | Same 5-6 and 9-10 windows, run from the U.S. registration date | 6 months | $325/class | 15 U.S.C. § 1141k; 37 C.F.R. § 7.36 | | International registration renewal | Every 10 years from the WIPO IR date | 6 months, surcharge of 50% of the basic fee | Swiss francs, to WIPO | Madrid Protocol art. 7; Common Regs. r. 30 | | Madrid dependency period ends | 5 years from the IR date | Transformation within 3 months of cancellation | National filing fees | 15 U.S.C. § 1141j; Madrid Protocol art. 6(3) | | Statement of use | 6 months from notice of allowance | Not extendable beyond 36 months total | $150/class | 15 U.S.C. § 1051(d); 37 C.F.R. § 2.89 | | Extension of time to file SOU | Each 6 months, up to 5 requests | None | $125/class | 37 C.F.R. § 2.89(b) | | Office action response | 3 months, one 3-month extension on request and fee | None | Extension fee per 37 C.F.R. § 2.6 | 37 C.F.R. § 2.62(a) | | Notice of opposition | 30 days from publication | Extensions: free / $200 / $400 | $600/class | 15 U.S.C. § 1063; 37 C.F.R. §§ 2.101-2.102 | | Petition to cancel | Any time on § 1064(3) grounds; 5 years for most others | None | $600/class | 15 U.S.C. § 1064 | | Expungement petition | Between the 3rd and 10th anniversary of registration | None | $400/class | 15 U.S.C. § 1066a; 37 C.F.R. § 2.91 | | Reexamination petition | First 5 years after registration, use-based registrations | None | $400/class | 15 U.S.C. § 1066b; 37 C.F.R. § 2.91 | | Assignment recordation | No deadline; within 3 months or before a subsequent purchase for priority | None | $40 first property, $25 each additional | 15 U.S.C. § 1060(a)(3)-(4); 37 C.F.R. § 3.11 |

Common Mistakes

Auditing the docket by reading the docket. If the docket has a wrong registration date, reading it twice produces the same wrong deadline. Recompute from certificates.

Trusting USPTO courtesy reminders. They are a convenience, not a system, and they go to whatever email address is on file — which Phase 3 may have just told you is wrong.

Treating "we still own it" as the whole ownership question. The register knows what it was told. An entity conversion, a merger, or a dropped "LLC" makes the owner of record a different legal person from the owner in fact, and that surfaces at the moment you need to file.

Swearing to an identification nobody verified. The declaration says the mark is in use on the goods recited in the registration. Deleting a dead entry inside the declaration is free; deleting it after submission is $250 per class; being caught by the audit programme is expensive and public.

Narrowing a U.S. base registration inside the Madrid dependency period. Five years from the international registration date, the base and the IR are one property. A free deletion in a Section 8 can silently narrow protection in every designated country.

Assuming registration is the whole portfolio. Trade dress, colour, packaging, taglines, and the certification programme running under a brand name are assets. They do not appear on a trademark docket, and nobody inventories them unless the annual review does.

Letting the licence file substitute for quality control. A model clause and no inspection record is the fact pattern in Barcamerica. Inspections that happened but were never written down are, evidentially, inspections that did not happen.

Filing gap-fill applications without clearing them. A Section 2(d) refusal on a routine coverage filing costs more in response work than the search would have cost, and it creates a written record of a conflict you now know about.

Producing a findings spreadsheet instead of a decision memo. Findings without a price and a consequence do not get funded. Three columns, two pages, one meeting.

Running the whole thing in one week in December. Split it across the year, fix a date, and assign phases to named people. A review that gets deferred in a busy year gets deferred in exactly the year the portfolio needed it.