As a trademark owner, you should ensure you are aware of the renewal requirements on your trademark registration. That you being said, if you are unaware of the renewal deadlines, you’re in luck: starting this year, the United States Patent & Trademark Office will be sending renewal notices to remind trademark owners of these important dates. Why is this such an important development? For the entire history of the Lanham Act (which dictates U.S. trademark law) – nearly 70 years – there have been no reminders or notices of renewal dates. Trademarks are subject to immediate cancellation after a missed deadline, and the responsibility to remember the dates and to make the necessary filings previously lay entirely with the owner. The new USPTO reminders will ease some of that burden.
You still have a great deal of responsibility for trademark renewal and maintenance as a trademark owner, however – don’t let this new step of assistance by the USPTO delay your obligations in taking one of the most critical steps in retaining the rights to your mark. Here are some important things to know about the trademark renewal process, and what you can now expect from the USPTO.
Receiving your USPTO trademark renewal reminders via email
The USPTO will send your trademark renewal reminders to the email address that they have on file for you. Be sure that the email address on file is one that you monitor regularly, otherwise you’ll miss them. You should also “whitelist” the USPTO email domain to ensure that your reminders won’t be accidentally filtered as spam or junk email. It’s also a good idea for you to independently set reminders for your maintenance and renewal filings – in other words, don’t rely exclusively on receiving an email from the USPTO, in case of any complications, or changes in your email address. Remember – these are courtesy reminders. You need to make your filings whether or not you receive them. As far as when you can expect the reminders, the USPTO will email you on the first possible day that you can file for your renewals.
Understanding the deadlines for your United States trademark renewals
The first important due date you need to remember is five years from the registration date of your trademark – that’s when your first maintenance filing is due (showing usage of your mark – see below). You have one year from that date to make that filing. The next important date is nine years from your registration date – you must file for your trademark renewal on that date (again, the last day you can make that filing is one year afterwards). Additional renewals are due every ten years thereafter.
Requirements of a United States trademark renewal filing
Once you receive your USPTO reminder email, you’ll submit a declaration of continued use. This is an affidavit indicating that your trademark has been in continuous, active, proper use in commerce. Trademarks not in active and proper use are subject to challenge or cancellation, so it’s important to maintain the strength and usage of your mark throughout its life. You’ll also need to submit a specimen which shows how you are using your trademark (e.g. a photograph of packaging for your products). As with your initial trademark application, the specimen will show how your mark is used in commerce to identify your products and/or services.
Ensuring that you do not miss trademark renewal deadlines
You should neither wait for a reminder nor put off your maintenance and renewal filings – once the due date arrives, it’s a good time for you to submit the necessary forms. The new USPTO courtesy reminders do not relax the “zero-tolerance” cancellation policy for late renewals – once the final date passes, you’ll lose your mark. You simply have too much at stake to wait to file your trademark renewals – the time and effort you put into creating and registering your mark, and the good will that your mark has acquired, to name just a few things. It’s also better to be proactive and as early as possible in your filings should any unforeseen complications or questions arise. You’ll be better equipped to deal with them without the additional pressure of dangerously looming deadlines.
USPTO trademark renewal fees
The USPTO recently lowered electronic filing fees, so provided that you agree to e-file and receive all correspondence electronically, you will pay those reduced fees. Trademark renewals (the filings due every ten years) now cost $300 per class of goods/services, rather than the $400 that they used to. Statements of continued use (which you’ll file at every due date – the fifth-year filing in addition to the ninth-year and subsequent tenth-year filings) remain at $100 per class of goods/services
Should you have any questions or uncertainties about any aspect of your trademark maintenance, from due dates to fees to what’s required in a filing, you should contact a trademark attorney for assistance. Again, you have too much at stake as a trademark owner to risk losing your mark due to errors or delays.