A trademark registration must be renewed periodically by filing documents to prove that you are still using the trademark to offer the goods and/or services listed in your trademark application. The trademark renewal deadlines are as follows:
1st renewal due: between the 5th and 6th anniversary of your registration date
2nd renewal due: between the 9th and 10th anniversary of your registration date
3rd, 4th and all subsequent renewals due: every 10 years after your second renewal deadline
You can also visit our blog post to read more about these renewal deadlines.
That being said, shortly before the renewal window opens for your trademark you are likely to be besieged by a number of offers from some somewhat shady companies telling you that they can assist you with filing your renewal paperwork. These solicitations are either complete scams, or, sent by companies that do not offer any form of legal representation. Using one of these companies or any other non-legal service can lead to an improperly filed renewal which can result in a loss of your federal trademark registration.
An Overview of the USPTO Trademark Renewal Process
The first step to making a renewal filing is to gather specimens for the government to show your mark is still in use years after your registration was first issued. These specimens are the same types of evidence you handed over to the government when you first applied for your trademark. Trademark attorneys interact with USPTO examiners on a regular basis, and, therefore, can better predict which specimens are more likely satisfy the government’s in-use requirement, which will save you time and help strengthen your trademark.
For example, trademark attorneys know that it is important to not simply re-use your specimens from your initial registration that are no longer in circulation or in use as this could serve as grounds for cancellation.
When your trademark is up for renewal, it is the perfect time to conduct a thorough review of your existing registration to ensure the mark is being properly used in case an enforcement issue arose. This includes making sure all the owner information is still accurate, ensuring your classes are relevant to the goods/services currently being offered under this mark, and determining the type of renewal filing that needs to be made. This type of review usually takes 1-1.5 hours of time to complete.
What Happens if I Don’t File My Trademark Renewal Correctly?
When a renewal is filed incorrectly, the most common issue is a prolonged delay that results in additional back-and-forth with the U.S. government. This means more deadlines, and more deadlines means increased opportunity for trademark registrations to lose track of time or to overlook a due date. Once the renewal period closes (or the time to correct an error expires) the USPTO is required to cancel the trademark registration.
Even if the renewal is initially accepted, it can still be filed incorrectly, and incorrectly-filed renewals can result in cancellation in one of two ways. The first way is for a third-party to file a petition to cancel with the USPTO’s Trademark Trial & Appeal Board (TTAB). This will result in money having to be spent not only in your time contesting the case, but also in possibly needing to retain the services of an attorney.
The second way is during the USPTO’s randomized audit process that was introduced earlier in 2017. Upon filing for renewal, any one-class application that has 4 or more goods in it, or a 2-class application with 2 or more goods may be subject to a random government audit. If it is discovered that your application has inaccurate or fraudulent information, you will be required to provide detailed information to prove you are still using the trademark on every single item listing in your registration. If this is not completed, those goods and services will be removed. If you don’t respond to the audit, the entire registration will be canceled.
How Much Does it Cost to File a Trademark Renewal?
To file a trademark renewal you will typically pay a fee to your attorney to assist you with the filing, and, a fee to the USPTO. The USPTO filing fee is $325 per class of goods/services for the first renewal, and, $425 per class of goods/services for the subsequent renewals. Our firm offers flat fee services for trademark renewal filings. To obtain a quote simply contact us by sending your registration number through our contact form.