If you fail to file a Section 8 and the six-month grace period that follows, then the USPTO cancels your registration forever, with no comeback even if you have used the mark in the California marketplace for decades.
This is a real business risk for California’s tech, consumer goods and entertainment sectors where market development and brand value creation happen fast and the value of a registered name can be enormous. A rapidly expanding SaaS firm in San Jose, a consumer brand that is growing through Whole Foods stores in Los Angeles, or a production company that is generating revenue through licensing in Hollywood, may have developed substantial trademark value since they first applied for a mark. The loss of that registration due to a missed compliance deadline is a mistake that cannot be corrected after the grace period expires.
Given California’s competitive trademark landscape, the stakes are high. When a mark is cancelled, it becomes available for use by others. This leaves the mark open for competitors who are tracking the USPTO’s cancellation list to apply for registration of the same (or similar) mark and class at once. The California business that developed the mark over five or ten years of continued use will then have to oppose the new application or file a new one, both of which are more uncertain and costly than a renewal.
In addition to the registration, California trademark renewal provides an opportunity to file an Incontestability Declaration under Section 15 with the Section 8 filing, after five years of subsequent use. An incontestable mark is more difficult to challenge on the basis of descriptiveness or geographic words and therefore bolsters the mark’s value in the California courts in the Ninth Circuit. united states trademark registrations and law (USTML) can handle all Section 8, Section 9 and Section 15 filings for California clients, keeping track of dates and preparing specimens and filing correctly before the renewal deadline.