Section 8 & 9 Renewal Checklist

By Casey Scott McKay · 2026-01-15

A federal trademark registration can last forever and dies on a schedule: it survives only if the owner files a sworn declaration of continued use between the fifth and sixth anniversaries of registration, and a combined declaration and renewal application in the year before every tenth anniversary after that. This checklist runs the whole filing in eleven phases — identifying which statute governs, fixing the measuring date, verifying the owner of record, auditing the identification of goods against what the business actually sells, assembling specimens that survive examination, choosing between use and excusable nonuse, pricing the package, executing inside the window, filing before the Eastern-time cutoff, and answering everything the Office sends back. It gives current per-class fees for Sections 8, 9, 15, and 71, every statutory window and grace period, the deficiency-surcharge arithmetic that rewards filing on the first day of the window instead of the last, and the escalation path through post-registration office actions, the proof-of-use audit, final refusal, and petition to the Director. One invented matter — Ashgrove Tools, Inc., a Chattanooga toolmaker with a three-class registration at its ten-year rung — runs through every phase with real dates, real fees, and one audit it nearly lost. It also names the two structural traps: Section 9 renews a registration but proves nothing, so a renewal without a conforming Section 8 buys you a cancelled mark, and an identification that no longer matches the business is a sworn misstatement rather than a clerical one.

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

Summary. Keep your registration alive: this is the ordered set of actions that gets a Section 8 declaration of continued use and a Section 9 renewal application filed, accepted, and docketed for the next rung. Eleven phases, from identifying which statute governs the registration through fixing the measuring date, verifying the owner of record, auditing the identification against real sales, building the specimen package, pricing the filing, signing inside the window, filing before the 11:59 p.m. Eastern cutoff, and surviving a proof-of-use audit. Current fees, every window and grace period, the surcharge arithmetic that makes an early filing cheaper than a late one, and the escalation path when the Office refuses. A three-class Chattanooga toolmaker is carried through every phase, including the audit that cost it a good it had quietly stopped selling.

Keywords: section 8 declaration · section 9 renewal · combined sections 8 and 9 · trademark renewal deadline · six-month grace period · deficiency surcharge · post registration proof of use audit · specimen of continued use · excusable nonuse · deleting goods from a registration · section 71 declaration · section 15 incontestability · registration cancellation · 15 u.s.c. 1058 · 15 u.s.c. 1059 · 37 c.f.r. 2.183 · tmep 1606 · trademark center · renewal certificate · maintenance docketing

What this checklist is for

Use this checklist to make sure nothing is missed on a maintenance filing. Every item below matters, because a federal registration is not a possession — it is a subscription, and the Office does not chase you for payment.

Two statutes do the work. Section 8, 15 U.S.C. § 1058, asks whether the mark is still in use in commerce on the things the registration says it covers; it comes due between the fifth and sixth anniversaries of registration and again in the year before every tenth anniversary. Section 9, 15 U.S.C. § 1059, asks nothing at all except a request and a fee, and it comes due only at the ten-year rungs. They are independent. Paying for a renewal that is not accompanied by a conforming declaration of use buys a cancelled registration and a receipt.

Who should use it. The paralegal or associate who owns the maintenance docket; solo and small-firm practitioners handling their own post-registration work; in-house counsel signing declarations they will be held to; and anyone who has just inherited a portfolio and does not yet trust the dates in it.

What you'll need before you start.

The certificate of registration and the complete TSDR file wrapper, downloaded — not the docket's summary of them.
Registration number, serial number, registration date, class numbers, and the identification of goods and services, transcribed from the certificate.
Sales data by item and by year for the last six years, from finance, not from marketing.
Native-resolution candidate specimens for each class, with the date and, for anything from a website, the URL.
The corporate record: every name change, conversion, merger, and assignment since the filing date.
A funded USPTO deposit account, a firm credit card, or EFT details, and a verified MyUSPTO account with two-step authentication for whoever will press submit.
37 C.F.R. § 2.6 as it reads today, because the fees move.

What this checklist does not do. It does not explain the doctrine underneath. The reasoning — why a specimen fails, when excusable nonuse is real, what happens when the window closes — is developed at length in Filing a Section 8 Declaration of Continued Use, and the surrounding law of use, non-use, and audits sits in the Trademark Maintenance and Survival Toolkit. If you want the calendar architecture rather than a single filing, read Docketing Deadlines: Never Miss a Renewal and Trademark Renewal Deadlines Explained. This document is the work order.

The matter carried through every phase

Ashgrove Tools, Inc., of Chattanooga, Tennessee, makes hand tools and runs woodworking classes. It owns Reg. No. 4,958,204 for ASHGROVE in standard characters, registered 12 May 2016 in three classes:

Class 8 — hand tools, namely, hand-operated pruning shears, loppers, hand saws, garden trowels, and weeding forks
Class 21 — watering cans
Class 41 — educational services, namely, conducting in-person workshops in the field of woodworking

The ten-year window opened 12 May 2025 and closed 12 May 2026, with a grace period to 12 November 2026. Four facts nobody had told counsel: Ashgrove stopped making weeding forks in 2021 and garden trowels in 2023; the last hand saw shipped in March 2024; the woodworking workshops went online-only in 2020 and have never returned to a physical room; and the company converted from Ashgrove Tools, LLC to Ashgrove Tools, Inc. on 1 October 2022 without recording anything.

The phases at a glance

| Phase | Name | Output | |---|---|---| | 1 | Identify the statute and fix the dates | Verified deadline sheet | | 2 | Verify the owner, the entity, the address | Clean chain of title | | 3 | Audit the identification against the business | Deletion list, signed off by the client | | 4 | Build the specimen package | One dated, sourced specimen per class | | 5 | Decide use versus excusable nonuse | A defensible answer, in writing | | 6 | Decide what rides along | Section 15, Section 7, non-renewal decisions | | 7 | Price it and fund it | Fee memo and a funded payment method | | 8 | Draft, verify, sign | Executed declaration, dated inside the window | | 9 | File and prove you filed | Receipt, TSDR confirmation, stamped file copy | | 10 | Answer what comes back | Response, deletions, audit proof | | 11 | Close the loop and reset the calendar | Acceptance, renewal certificate, next rung docketed |

Phase 1 — Identify the statute and fix the dates

[ ] Open TSDR and read the registration date off the certificate, not off the docket.
- Why. Every maintenance clock runs from the registration date. Not the application filing date, not publication, not the notice of allowance, not the day the certificate arrived in the mail. This is the single most common data-entry error in maintenance docketing and it is silent — nothing flags it until the window has shut.
- Authority. 15 U.S.C. § 1058(a); 37 C.F.R. § 2.160(a).
[ ] Determine which ladder the registration is on before calculating anything.

| Registration basis | Use filing | Renewal filing | Where | |---|---|---|---| | § 1(a), § 1(b), § 44(d), § 44(e) — Principal or Supplemental Register | Section 8, 15 U.S.C. § 1058 | Section 9, 15 U.S.C. § 1059 | USPTO | | § 66(a) extension of protection (Madrid) | Section 71, 15 U.S.C. § 1141k | None at the USPTO; renew the international registration | USPTO for § 71; WIPO for renewal, 37 C.F.R. § 7.41 | | Registered under a prior Act, not republished under § 12(c) | Section 8, on the measuring date in 37 C.F.R. § 2.160(a)(1) | Section 9 | USPTO |

[ ] For a § 66(a) registration, docket two clocks in two offices: the Section 71 declaration runs from the date the U.S. extension of protection was granted, while the WIPO renewal runs from the international registration date. They are usually months or years apart. See The Madrid Protocol: How International Registration Works and the International Trademark Toolkit.
- Trap. A docket that shows only the Section 71 date will let the international registration lapse in every designated country while the U.S. leg stays perfectly healthy.
[ ] Write out all four dates for this rung — window opens, window closes, grace opens, grace closes — and have a second person recompute them from the certificate without looking at your arithmetic.
- Ashgrove: opens 12 May 2025, closes 12 May 2026, grace to 12 November 2026.
[ ] Apply the rollover rule but do not rely on it. If the last day is a Saturday, Sunday, or federal holiday in the District of Columbia, the filing may be made on the next business day. 37 C.F.R. § 2.196.
[ ] Note that electronic filings are timestamped in Eastern Time and the Office's day ends at 11:59 p.m. ET. 37 C.F.R. § 2.195. A Pacific-coast firm filing at 9:30 p.m. local on the last day has already missed it.
[ ] Calendar the work to begin in the first month of the window, with reminders at open, open plus 30 days, and every 60 days thereafter, plus a hard escalation to the responsible partner 120 days before the window closes.
- Why. This is not caution, it is money. Under 37 C.F.R. § 2.164(a)(1) a deficiency in a timely declaration may be cured at no surcharge if the cure lands before the end of the statutory filing period; after that, the surcharge attaches. Filing early buys a free cure, a free do-over on a fatally defective declaration, and time to discover that the specimen everyone assumed was fine is not.
[ ] Treat the USPTO's courtesy reminder email as a nice-to-have with no legal weight.
- Authority. 15 U.S.C. § 1058(d) discharges the statutory notice obligation through language printed on the certificate itself. If the client changed email domains or a former agent is still the correspondent, the reminder went somewhere else and nobody will tell you.

The distinction worth knowing. Fail the Section 8 and the registration is cancelled, 37 C.F.R. § 2.164(b). Fail the Section 9 and it expires, 37 C.F.R. § 2.182. TSDR labels them differently, and the labels matter when you are reading someone else's dead registration in diligence. Both are equally unrecoverable.

Phase 2 — Verify the owner, the entity, and the correspondence address

[ ] Print the registration certificate and the current corporate good-standing certificate, put them side by side, and read the two entity names aloud.
- Why. The declaration must be filed by the current owner of the registration. Ashgrove's certificate says "Ashgrove Tools, LLC." The company has been "Ashgrove Tools, Inc." since 1 October 2022. Filed as-is, that draws an office action in a window that is already half gone.
- Authority. 37 C.F.R. § 2.161(a)(1); TMEP §§ 502.02(b), 503.03, 505.
[ ] Pull the assignment abstract from the USPTO Assignment Search and reconcile every link in the chain — assignment, merger, conversion, name change — against the corporate record.
[ ] Record whatever is missing before you file, not in response to the office action. Electronic recordation is $40 for the first property and $25 for each additional property in the same document. 15 U.S.C. § 1060(a)(3)-(4); 37 C.F.R. § 3.11. Work it with the Trademark Assignment Recordal Checklist.
[ ] Confirm the owner's domicile address of record and, if the owner is foreign-domiciled, confirm that a U.S.-licensed attorney is of record. 37 C.F.R. § 2.11.
[ ] Update the correspondence email and address in the Office's records, and confirm the docketing address is one that survives a departure.
[ ] Identify the human who will sign, by name and title, and confirm they still work there.

Practice tip for deal counsel. In diligence, a target's open maintenance window is a live liability, not a footnote. If it closes within ninety days of signing, put the filing on the pre-closing covenant list and name the filer. Chain-of-title defects surface at exactly this moment; see the Trademark Due Diligence Checklist.

Phase 3 — Audit the identification against the business

This is the phase that decides whether the filing is routine or dangerous.

[ ] Transcribe the identification verbatim, item by item, into a worksheet with one row per good or service per class.
[ ] Put a revenue figure or a shipment date next to every row, sourced from finance. "We still sell those" from a marketing lead is not evidence.
[ ] Mark every row you cannot substantiate for deletion, and get the client to sign the worksheet.
- Why. The declaration swears the mark is in use on the goods recited in the registration. Swearing to a good nobody has shipped in three years is a knowingly false material statement if the signer knew, and the standard for fraud is subjective intent to deceive shown by clear and convincing evidence. In re Bose Corp., 580 F.3d 1240, 1245 (Fed. Cir. 2009). The claim rarely wins, but the deletion it forces is expensive and public. See Fraud on the Trademark Office: What In re Bose Actually Requires and the Trademark Fraud Claim and Self-Audit Checklist.
- Trap. Deleting inside the declaration itself is free. Deleting after submission and before acceptance costs $250 per class. 37 C.F.R. § 2.161(c). Do the audit before you file and the same edits cost nothing.
[ ] Check whether the recited wording still describes what the business does, not merely whether the business does something adjacent.
- Ashgrove's Class 41 recites "conducting in-person workshops." The workshops have been online since 2020. There is no specimen on earth that shows in-person workshops, and an amendment to broaden the recitation is not available — a registration may be amended only if the change does not materially alter the mark and does not broaden the identification. 15 U.S.C. § 1057(e); 37 C.F.R. § 2.173(e). The class comes out, and if Ashgrove wants the online service covered it files a new application.
- Authority. TMEP § 1609.03. The scope problem in general is worked through in Drafting an Identification of Goods and Services and the Goods and Services Identification Checklist.
[ ] Count the surviving items per class and note your audit exposure. Random audit selection targets timely filings with at least one class containing four or more goods or services, or at least two classes containing two or more each. A conservative pre-filing deletion pass sometimes drops the filing below the thresholds entirely.
[ ] Before deleting anything from a registration that is the basis of a Madrid international registration, check the five-year dependency period. Within five years of the international registration date, a narrowing of the U.S. basic registration narrows every designation with it.

Ashgrove's worksheet, after Phase 3:

| Class | Recited | Keep | Delete | |---|---|---|---| | 8 | pruning shears, loppers, hand saws, garden trowels, weeding forks | pruning shears, loppers, hand saws | garden trowels, weeding forks | | 21 | watering cans | watering cans | — | | 41 | in-person woodworking workshops | — | entire class |

Phase 4 — Build the specimen package

[ ] Collect one specimen per class showing the mark as used on or in connection with the surviving goods or services. 15 U.S.C. § 1058(b); 37 C.F.R. § 2.161(a)(6).
[ ] For goods, use a photograph of the mark on the item, its container, a tag or label, or a point-of-sale display. Advertising is not a specimen for goods. 37 C.F.R. § 2.56(b)(1).
[ ] For services, use material showing the mark used in the sale or advertising of the service with a reference to the service itself. 37 C.F.R. § 2.56(b)(2).
[ ] For a webpage specimen, capture the URL and the access date on the face of the printout, and make sure the page functions as a point of sale — a price, an order control, a cart. "Contact us for pricing" is advertising.
- Authority. 37 C.F.R. § 2.56(c); In re Siny Corp., 920 F.3d 1331 (Fed. Cir. 2019).
[ ] Confirm the mark on the specimen matches the mark in the registration. A redrawn logo, a dropped design element, or a house mark bolted on the front is a different mark, and the answer is a new application, not a maintenance filing that pretends otherwise.
[ ] Confirm the mark is used as a mark and not descriptively. A specimen where the wording reads as an ordinary description of the product invites the examiner to ask what exactly is being maintained; the line between trademark use and descriptive use is drawn in Descriptive and Nominative Fair Use.
[ ] Where the specimen shows a licensee's use, confirm the license is in force and that quality control is real. Use by a controlled licensee inures to the owner. 15 U.S.C. §§ 1055, 1127. Uncontrolled use does not, and it is a cancellation ground — see Naked Licensing and the Trademark License Quality Control Checklist.
[ ] For a certification or collective mark, remember the declaration carries extra content — legitimate control over use, and for a certification mark, that the owner does not engage in the production or marketing of the certified goods or services — and the specimen must show use by someone other than the owner. 15 U.S.C. § 1058(b); 37 C.F.R. § 2.161(a). The governance mechanics are in the Certification and Collective Mark Application Checklist.
[ ] Save every specimen as .jpg or .pdf, under the Office's file-size limits, with a filename that records the class and the date, and file the natives in the matter folder.
[ ] Read Specimen Refusals: Why the USPTO Rejected Your Proof of Use before you settle on a marginal one. The cost of a second look now is minutes; the cost later is an office action inside a closing window.

Trap. The specimen must show current use, not historical use. A 2018 catalogue page proves nothing about 2026, and an examiner who notices the copyright date on the footer will say so.

Phase 5 — Decide use versus excusable nonuse

[ ] For each class, choose one: continued use, or excusable nonuse. You may not split the difference with a vague sentence.
[ ] Claim excusable nonuse only where the nonuse is (a) not the result of an intent to abandon and (b) caused by special circumstances that excuse it — a plant fire, an import ban, a regulatory hold, a war. 15 U.S.C. § 1058(b)(2); 37 C.F.R. § 2.161(a)(6)(ii); TMEP § 1604.11.
[ ] If you claim it, state the date use stopped, the specific circumstance, the steps being taken to resume, and the expected resumption date. Generalities draw an office action every time.
- Trap. A decision to stop selling because the product did not sell is a business decision, not a special circumstance. Slow sales, a rebrand, and "we are reformulating" are not excuses; they are the definition of ordinary nonuse.
[ ] Understand what acceptance buys. It resolves the Office's Section 8 inquiry and nothing else. A third party may still petition to cancel for abandonment, where three consecutive years of nonuse is prima facie evidence and the registrant must show an intent to resume within the reasonably foreseeable future. 15 U.S.C. §§ 1064, 1127; Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 1581 (Fed. Cir. 1990). Read Use It or Lose It, and if a challenge is realistic, Proving and Defeating Trademark Abandonment and the Trademark Abandonment Evidence Checklist.

Phase 6 — Decide what rides along

[ ] At the five-to-six-year rung, decide on a Section 15 declaration of incontestability and file it with the Section 8 if the conditions hold: five consecutive years of continuous post-registration use, no final decision adverse to the claim of ownership, and no pending proceeding. 15 U.S.C. § 1065; 37 C.F.R. § 2.167; TMEP § 1605. $250 per class.
- Why. Incontestability forecloses a later attack that the mark is merely descriptive. Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 196-99 (1985). Details in Section 15 Incontestability: When and How to File.
- Trap. Do not let a solid Section 8 drag a marginal Section 15 along behind it. A Section 15 that overstates continuity is an independent exposure, and it is entirely optional.
[ ] If the Section 15 was never filed, note that it may be filed at any time after any five-year period of continuous post-registration use, including at the ten-year rung. 37 C.F.R. § 2.167(f); TMEP §§ 1605.03, 1605.04.
[ ] Decide whether to renew fewer than all classes. A Section 9 application may cover a subset. 37 C.F.R. § 2.183(d). Letting a class go by simply not renewing it is free and is the cleanest pruning instrument in the maintenance toolbox.
- Ashgrove drops Class 41 from both filings. Nothing is paid, nothing is deleted after the fact, and the $250-per-class deletion fee never comes up.
[ ] File any Section 7 correction or amendment the audit surfaced — a typographical error in the owner's name, a mark description that no longer matches, a class number under a superseded system. $100 per request. 37 C.F.R. § 2.173.
[ ] Confirm the business is still using the ® symbol correctly, and only on registered marks for registered goods. 15 U.S.C. § 1111.
[ ] Ask the broader question the deadline exists to force: is this registration worth the next fee? A two-class registration for a discontinued sub-brand costs $1,300 now and $1,300 in ten years for a right nobody enforces. The pruning framework is in Building and Managing a Trademark Portfolio and the Annual Trademark Portfolio Review Checklist.

Phase 7 — Price it and fund it

[ ] Build the fee memo before you touch the form, and send it to the client with the deadline in the subject line.

| Filing | Fee | |---|---| | Section 8 declaration | $325 per class | | Section 9 renewal | $325 per class | | Section 8 grace-period surcharge | $100 per class | | Section 9 grace-period surcharge | $100 per class | | Section 15 declaration | $250 per class | | Section 71 declaration (Madrid) | $325 per class | | Deficiency surcharge | $100 | | Deleting goods, services, or classes after submission and before acceptance | $250 per class | | Amendment or correction under Section 7 | $100 |

37 C.F.R. § 2.6. Underestimating is a multi-class problem: a ten-class house mark at the ten-year rung costs $6,500 in government fees before anyone bills an hour, and $8,500 if it slips into grace.

[ ] Do the arithmetic for this filing, in writing.
- Ashgrove, two classes, combined Sections 8 and 9: (2 × $325) + (2 × $325) = $1,300. Filing all three classes would have cost $1,950 for a class that could not have been supported.
[ ] Confirm the payment method works the week before you file: deposit account funded, card not expired, EFT authorised.
- Trap. 37 C.F.R. § 2.183(e) is the rule nobody reads. If a multi-class renewal arrives with a fee insufficient to cover all classes and you have not specified which classes the money is for, the Office applies it in ascending class order. A short payment on a Class 8 / Class 21 / Class 41 registration silently renews the wrong classes.
[ ] Give the client the ten-year number, not the today number. A single-class registration carried through one decade costs roughly $900 in government fees alone — $325 for the first Section 8, $250 for the optional Section 15, and $650 for the combined Sections 8 and 9 — before professional fees or office actions. Portfolio-level budgeting lives in the Trademark Portfolio Management Toolkit.

Phase 8 — Draft, verify, sign

[ ] Use the combined Sections 8 and 9 form in Trademark Center at the ten-year rung, and the Section 8 or combined Sections 8 and 15 form at the five-year rung. Electronic filing is mandatory. 37 C.F.R. § 2.23(a).
- Paper is available only by petition to the Director on a showing that electronic submission was not possible. 37 C.F.R. § 2.147. It is a remedy, not an option.
[ ] Confirm the signatory is a person with legal authority to bind the owner, a person with firsthand knowledge and actual or implied authority, or an attorney of record. 37 C.F.R. § 2.193(e)(1).
[ ] Confirm the declaration carries the § 2.20 warning — willful false statements are punishable under 18 U.S.C. § 1001 and may jeopardize the validity of the registration.
[ ] Confirm the execution date is on or after the day the window opened.
- Authority. 37 C.F.R. § 2.161(a)(2). A declaration signed a month early attests to facts as of the wrong date.
- Trap. This is the rule that catches careful lawyers. In In re Holland Am. Wafer Co., 737 F.2d 1015 (Fed. Cir. 1984), the registrant executed and filed its papers about a month before the statutory period opened. The Federal Circuit held that the statute "is concerned with use during the renewal period," and a registration issued in 1922 and twice renewed was gone. Id. at 1017. Timeliness set by statute is not a defect the Office may waive.
[ ] Note the signature asymmetry: the Section 9 request needs only the signature of the registrant or the registrant's representative, 37 C.F.R. § 2.183(a), while the Section 8 declaration needs a verified statement from someone with knowledge. Do not let the looser standard govern the tighter document.
[ ] Proofread against the certificate, not the draft — registration number, owner name, class numbers, and the surviving identification, character for character. The Section 8 Declaration — Template gives model language for the verified statement.
[ ] Have a second reader confirm four things: the mark on the specimen matches the mark of record; the goods claimed match the goods kept; the signer's title is accurate; the class count matches the fee.

Phase 9 — File and prove you filed

[ ] File in the first month of the window if the package is ready. Waiting buys nothing and costs the free cure.
[ ] Submit before 11:59 p.m. Eastern, and not on the last day. 37 C.F.R. § 2.195.
[ ] Save the electronic acknowledgment receipt with its filing date and reference number to the matter file the moment it arrives.
[ ] Check TSDR the next business day and confirm the filing appears, the classes are right, and the fee posted to the classes you intended.
[ ] Docket three new dates: an acceptance-not-yet-received follow-up at 90 days, the end of the statutory filing period, and the end of the grace period.
[ ] Send the client a one-paragraph confirmation with the filing date, the classes filed, the classes deliberately dropped, the fees paid, and what happens next.

Ashgrove filed the combined Sections 8 and 9 on 3 June 2025, three weeks into a twelve-month window, for Classes 8 and 21, with three items in Class 8 and one in Class 21. Government fees at filing: $1,300.

Phase 10 — Answer what comes back

[ ] Diary the response deadline the day the office action issues. For a Section 8 refusal you have six months from issuance, or the end of the Section 8(a) filing period, whichever is later. 37 C.F.R. § 2.163(b). For a Section 9 refusal, six months from issuance or the expiration date of the registration, whichever is later. 37 C.F.R. § 2.184.
[ ] Check whether grace-period time remains. Both rules permit filing a complete new declaration or renewal application if it does, which is often faster and safer than arguing.
[ ] Compute the surcharge before you respond. A deficiency in a timely filing corrected before the end of the statutory filing period costs nothing; corrected after it, $100. 37 C.F.R. §§ 2.164(a), 2.185. Identical office actions answered identically cost different amounts depending only on when the original went in.
[ ] If the action is a proof-of-use audit, read it as a sample, not a quiz. The examiner typically names two additional items per audited class and requires proof for each. 37 C.F.R. § 2.161(b) authorises the Office to require "such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary."
- Trap. If you cannot prove an audited item, you must delete not only that item but every good or service in the registration for which the mark is not in use. Failing the first audit action triggers a second demanding proof for all remaining goods in the class, and unproved items after that take the whole registration down.
[ ] Answer an audit narrowly. Prove what is provable, delete what is not, and volunteer nothing about how the item got into the registration in the first place.
[ ] If the refusal is maintained, the route is a petition to the Director — 37 C.F.R. § 2.165 for a Section 8, § 2.186 for a Section 9 — filed within six months of the action maintaining the refusal, after a response to the initial refusal, and a decision by the Director is a prerequisite to any appeal or civil action. There is no ex parte appeal to the TTAB from a post-registration refusal.

Ashgrove's audit, worked. The Office issued an audit action on 9 October 2025 requiring proof of use for "hand saws" and "loppers" in Class 8. Loppers were easy — a current product page with a cart. Hand saws had not shipped since March 2024. Counsel deleted hand saws, swept the rest of the class, confirmed pruning shears and loppers, and responded on 5 December 2025.

| Item | Amount | |---|---| | Deletion fee, Class 8, 37 C.F.R. § 2.161(c) | $250 | | Deficiency surcharge | $0 — the correction landed 5 December 2025, five months before the filing period closed 12 May 2026 | | Total additional government fees | $250 |

Notice of acceptance of the Section 8 and the renewal certificate issued 6 February 2026. Total government fees: $1,550.

Now the counterfactual. Had Ashgrove filed on 28 April 2026 — a fortnight before the window shut, where most maintenance filings actually land — the audit would have issued in the autumn of 2026, the response would have landed after the filing period closed, and the same deletion would have cost $250 plus the $100 surcharge, with the registration sitting in its grace period and no room left for a clean replacement. Same lawyer, same facts, same client. Different date, different risk.

Phase 11 — Close the loop and reset the calendar

[ ] Download the notice of acceptance and the renewal certificate and file both with the original registration certificate.
[ ] Update the register-facing record: owner name, correspondence address, and the surviving identification as accepted.
[ ] Docket the next rung off the registration date, not off the acceptance date. Ashgrove's next combined filing runs 12 May 2035 to 12 May 2036, grace to 12 November 2036.
[ ] Renew the collateral rights that key off a live registration: CBP recordation through IPRR — see Stopping Counterfeits at the Border — and marketplace and platform brand-protection enrolments, which revalidate against the register and quietly drop marks that go dead. Platform notice-and-takedown practice, including where a registration does and does not matter, is covered in The DMCA Safe Harbor.
[ ] Move the specimen package into a dated evidence library organised by mark and year. The next filing, the next audit, and the next enforcement action all draw on it. Keep the index in a Trademark Portfolio Inventory.
[ ] Write the client a closing memo naming what was dropped and what it means. Ashgrove lost Class 41 coverage entirely; the follow-on is a new application for online woodworking instruction, cleared first — see Trademark Clearance Searching: What a Knockout Search Can and Cannot Tell You — and prosecuted through the Trademark Application and Prosecution Toolkit.
[ ] Feed everything learned back into the annual review, so the identification never drifts this far again.

What survives a lapse, and what does not. Cancellation kills the registration, not the trademark. Common-law rights built by actual use continue with their territorial limits intact. What is gone is the § 1057(b) presumption of validity, constructive notice and nationwide constructive-use priority under § 1072, any incontestability and the five-year clock behind it, the right to use ®, CBP recordation, and most platform programmes. Then you refile and discover that six intervening years produced third-party rights the original examination never saw.

Common Mistakes

Renewing without maintaining. Paying the Section 9 fee and skipping the Section 8. The two statutes ask different questions and neither answers for the other. 15 U.S.C. §§ 1058, 1059.

Running the clock from the wrong date. The application filing date, the publication date, or the notice of allowance instead of the registration date. Silent until fatal.

Filing on the last available day. It converts every fixable deficiency into a surcharge and every fatal one into a cancellation.

Signing early. A declaration executed before the window opens attests to the wrong period. Holland American Wafer is a sixty-year registration lost to a signature date.

Swearing to an identification nobody verified. Free to fix inside the declaration, $250 per class after submission, and a fraud allegation if the signer knew.

Treating a webpage as a specimen because it exists. No URL, no access date, no point of sale, no use.

Missing the entity change. The owner of record is an LLC that converted three years ago and nobody recorded the conversion.

Assuming the Office will remind you. The statutory notice was printed on the certificate. Everything after that is a courtesy to an address that may be stale.

Docketing the Section 71 date and forgetting WIPO. Two offices, two clocks, one dead international registration.

Answering an audit as though it were about the two named items. It is a sample. Sweep the whole class before you respond.

Forgetting that copyright works differently. Registrations for works created on or after 1 January 1978 have no renewal filing at all — see the Copyright Fundamentals Toolkit — so a client who has been through a copyright filing may arrive with exactly the wrong instinct. If the maintenance review turns up a redrawn logo, the artwork is separately registrable; run it through the Copyright Registration Checklist.

Deadlines at a Glance

| Filing | Window | Grace period | Fee | 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); TMEP § 1604.04 | | Section 8 at each 10-year rung | Year before each 10th anniversary of registration | 6 months, +$100/class | $325/class | 15 U.S.C. § 1058(a)(2); 37 C.F.R. § 2.160(a)(2) | | Section 9 renewal | Year before each 10th anniversary of registration | 6 months, +$100/class | $325/class | 15 U.S.C. § 1059(a); 37 C.F.R. §§ 2.182, 2.183; TMEP § 1606.03 | | Section 15 declaration | Any time within 1 year after a 5-year period of continuous post-registration use | None | $250/class | 15 U.S.C. § 1065; 37 C.F.R. § 2.167 | | Section 71 declaration (Madrid) | Same 5-6 and 9-10 windows, run from the date the U.S. extension of protection was granted | 6 months, +$100/class | $325/class | 15 U.S.C. § 1141k; 37 C.F.R. §§ 7.36-7.37; TMEP § 1613 | | WIPO renewal of the international registration | 6 months before the end of each 10-year term, run from the IR date | 6 months, surcharge of half the basic fee | Basic fee in Swiss francs plus per-Contracting-Party fees | Madrid Protocol art. 7; Common Regs. r. 30; 37 C.F.R. § 7.41 | | Response to a post-registration office action | 6 months from issuance, or the end of the § 8(a) filing period, whichever is later | — | — | 37 C.F.R. § 2.163(b) | | Response to a refusal of renewal | 6 months from issuance, or the registration's expiration date, whichever is later | — | — | 37 C.F.R. § 2.184 | | Petition to the Director after a maintained refusal | 6 months from the action maintaining the refusal | None | Petition fee, 37 C.F.R. § 2.6 | 37 C.F.R. §§ 2.165, 2.186 |