Us capitol building image

Trademark Renewal and Madrid Protocol Attorney

Section 8, 9 and 15 filings, USPTO audits, assignments, licensing and Madrid Protocol or direct national filings for brand owners expanding abroad.

Google Reviews

5 / 5 (97 reviews) View on Google

Drop us a message today!

By providing a telephone number and submitting the form, you are consenting to be contacted by SMS text message and agreeing to our Privacy Policy. Message frequency may vary. Message and data rates may apply. Reply STOP to opt out of further messaging. Reply HELP for more information.

Trademark Renewal and Madrid Protocol Attorney: Maintenance and International Registration

A U.S. trademark registration does not maintain itself: it must be kept alive with declarations of use on a fixed schedule, and it stops at the border unless you extend protection abroad. Capitol Law Partners handles Lanham Act maintenance, USPTO audits, assignments and licensing, and international filings through the Madrid Protocol and direct national applications.

What a trademark maintenance attorney does for you

We docket every Section 8, 15 and 9 deadline with its grace period, review use for each listed good and service, delete unused items, select specimens, answer post-registration audits, record assignments and entity changes, draft licenses with the quality-control terms the law requires, and handle Madrid Protocol and direct national filings with local counsel abroad. Not yet registered? Our clearance, registration and office action response services come first.

Who must file, and when

Section 8 declaration of continued use

Every registrant must file a Section 8 declaration between the fifth and sixth anniversaries of registration, confirming use in commerce for the listed goods and services with a specimen for each class. Excusable nonuse is accepted only when use stopped for reasons beyond your control. Madrid extensions file an equivalent Section 71 declaration on the same schedule.

Section 15 declaration of incontestability

After five consecutive years of continuous use following registration, with no adverse decision or pending challenge, you may file a Section 15 declaration. Incontestability makes the registration conclusive evidence of validity, ownership and the exclusive right to use the mark, and bars the most common attack on a weaker mark: that it is merely descriptive. Genericness, abandonment, fraud and functionality remain available to a challenger.

Sections 8 and 9 renewal every ten years

A registration lasts ten years and is renewed indefinitely by filing a combined Section 8 declaration and Section 9 renewal between the ninth and tenth anniversaries, and every ten years afterward. Each maintenance deadline carries a six-month grace period with an additional fee; once it passes, the registration is cancelled or expires and cannot be revived, leaving only a new application with a new priority date.

The post-registration audit program

The USPTO randomly audits maintenance filings that list several goods or services and demands proof of use for additional items. Unproven items are deleted, a fee applies to deletions made after filing, and a registrant who fails to respond loses the entire registration. List only what you actually sell.

Specimens and ownership records

A maintenance specimen must show the mark as registered, in current use: labels, packaging or product photographs for goods, web pages with ordering information, or advertising for services. Mock-ups, altered images and printer's proofs are rejected, and web page specimens must show the URL and access date. Ownership must also be right: an assignment must be in writing and transfer the goodwill of the business, a maintenance filing in the wrong entity's name is void, and recording assignments, mergers and name changes with the USPTO protects the chain of title. We coordinate entity changes with our business formation team and manage multi-mark dockets through IP portfolio management.

Licensing and quality control

Use by a controlled licensee counts as the owner's use, but the licensor must actually control the nature and quality of the licensed goods or services. A naked license, with no quality-control terms or with terms never enforced, can be treated as abandonment of the mark.

International protection: process and timeline

The Madrid Protocol

  1. Basic mark. A U.S. national, domiciliary or business with a real and effective commercial establishment here may file an international application based on a pending U.S. application or registration, for goods and services no broader than the basic mark.
  2. Filing through the USPTO. As office of origin, the USPTO certifies the application to the World Intellectual Property Organization, which records it and notifies each designated country.
  3. National examination. Each designated office examines the mark under its own law and must issue any provisional refusal within 12 or 18 months; responding usually requires local counsel, whom we engage and supervise.
  4. Dependency, central attack and transformation. For five years the international registration depends on the U.S. basic mark; if that application is refused or the registration is cancelled or restricted, the foreign designations fall to the same extent, although each may be transformed into a direct national application within three months, keeping its date.

Countries can be added later, and the registration is renewed centrally every ten years. Direct national filings are safer where a market is not a Madrid member, where goods must be described more broadly than U.S. practice allows, or where the basic mark is vulnerable.

Paris Convention priority

A first filing in one Paris Convention country gives six months to file in other members with the original date as the priority date. A U.S. business expanding abroad should use that window; a foreign business can claim its home filing date here and, once its home registration issues, register without first proving U.S. use.

A note for Turkish businesses

A TÜRKPATENT registration protects the mark in Turkey only. A Turkish company can designate the United States through a Madrid international registration based on its Turkish mark or file directly with the USPTO; either way, a foreign-domiciled applicant or registrant must be represented by a U.S.-licensed attorney before the USPTO. We align goods descriptions to the USPTO's stricter standard, prepare the proof of U.S. use the Section 8 or 71 declaration will demand, and time filings to preserve Paris Convention priority, working in Turkish from our Istanbul office.

First-to-file abroad versus use-based rights at home

Most foreign systems, including Turkey, the European Union and China, grant rights to the first party to file. In the United States, rights arise from use in commerce, so an earlier user may hold common-law rights that defeat a later registrant in its area of use, although a federal registration gives nationwide priority from its filing date. U.S. clearance must therefore look beyond the register, and foreign filings should precede launch. Enforcement is covered on our trademark enforcement and TTAB page.

Common problems we help you avoid

  • Missing a Section 8 or 9 window because USPTO reminders went to a former employee or an old address.
  • Paying a misleading third-party solicitation that looks like a USPTO invoice.
  • Submitting a specimen showing a modernized logo that differs from the registered mark, or listing goods never sold.

Why Capitol Law Partners

Cagatay Ersoy, founder and managing partner of Capitol Law Partners, is a graduate of Columbia Law School and advises brand owners on trademark clearance, registration and enforcement. Our attorneys and staff work in English, Turkish, Spanish, Portuguese and French, and we serve clients nationwide from our offices in Washington, DC, Herndon, Virginia, New York and Minneapolis, with an Istanbul office.

Learn more about protecting your brand

Keep your registration in force

Send us your registration numbers and the countries where you sell, and we will audit the docket, flag the deadlines and recommend Madrid or direct filings. Schedule a consultation or call +1 (202) 440-2272.

Frequently Asked Questions

When is my first trademark maintenance filing due?
The first filing is the Section 8 declaration of continued use, due between the fifth and sixth anniversaries of your registration date, with a six-month grace period after that for an additional fee. Most owners file a Section 15 declaration of incontestability at the same time if the mark has been in continuous use for five years. The next filing is the combined Sections 8 and 9 renewal between the ninth and tenth anniversaries.
What does incontestability actually give me?
Once a Section 15 declaration is accepted, the registration becomes conclusive rather than merely prima facie evidence of the mark's validity, your ownership and your exclusive right to use it. The practical benefit is that a challenger can no longer argue the mark is merely descriptive. It does not shield the registration from claims of genericness, abandonment, fraud or functionality, and it does not extend the renewal schedule.
What happens if I miss a renewal deadline?
If both the deadline and the six-month grace period pass without an acceptable filing, the registration is cancelled or expires. The USPTO has no authority to reinstate it, and no petition can revive it. You would need to file a new application, which is examined from the beginning and takes a new filing date, so any intervening third-party filing could now block you. Docketing is the only reliable protection.
What is a USPTO post-registration audit?
The USPTO randomly selects Section 8 and Section 71 declarations that list multiple goods or services and asks the owner to prove use for additional items in each audited class. Goods or services that cannot be supported must be deleted, with a fee for deletions made after the declaration was filed. Failing to respond results in cancellation of the whole registration. We review every identification against actual sales before filing to avoid surprises.
Can I use the Madrid Protocol if I only have a pending U.S. application?
Yes. An international application may be based on a pending U.S. application as well as on an issued registration, provided you are a U.S. national, domiciled in the United States or have a real and effective commercial establishment here. The goods and services cannot exceed those in the basic application. Because the international registration depends on that basic mark for five years, a refusal of the U.S. application can bring down the foreign designations.
What is central attack and how do I reduce the risk?
Central attack describes the loss of an international registration, and all of its foreign designations, because the basic U.S. application or registration was refused, cancelled or restricted within five years of the international registration date. We reduce the risk by clearing the U.S. mark thoroughly first, drafting a precise identification of goods and services, and considering direct national filings in the most important markets. Transformation remains available as a fallback.
Does my Turkish trademark registration protect me in the United States?
No. A TÜRKPATENT registration has effect only in Turkey. To protect the mark in the United States you must either designate the United States through a Madrid Protocol international registration based on your Turkish mark or file a national application directly with the USPTO. In both cases a foreign-domiciled owner must be represented by a U.S.-licensed attorney before the USPTO, and you will eventually need to prove use of the mark in U.S. commerce.
Do I need to record a trademark assignment with the USPTO?
Recording is not required for the assignment to be valid between the parties, but it is strongly advisable. A recorded assignment gives public notice, protects the new owner against a later purchaser who records first, and ensures that maintenance filings are made in the correct name. A Section 8 declaration filed by the wrong owner is void, and if the deadline has passed by the time the error is discovered, the registration is lost.