Do you have a patent or trademark under Section 9 that is about to expire? If so, you likely need to prepare for renewal soon. If you do not take the appropriate steps to renew your trademark, the U.S. Patent and Trademark Office (USPTO) will ultimately cancel your registration, thereby allowing others to profit off of your previously held trademark.
Registered trademarks must be renewed every 10 years in a process called a Section 9 filing. Renewals do come at some expense—currently, it costs $400 for renewal in each class in which you’re filed. However, after successfully filing your application and paying the fee, your trademark is covered for the next decade. In other words, it is a one-time fee that keeps you protected for years into the future.
You may conduct the renewal process through the USPTO website using an electronic filing system. There, you will enter in all of the required data, submit your credit card information and some photographs and receive confirmation of your application via email.
Completing the application in a timely manner
One of the most important aspects of the renewal process is making sure you abide by all of the dates associated with it. If you miss any of these dates, the USPTO may decide to cancel your registration and toss out your application for renewal.
All of the dates for renewal are measured by starting at the date your trademark registration was issued to you, and not from the filing date. This is important to keep in mind as you begin the process. You are allowed to begin filing for a renewal exactly nine years after your trademark registration was first issued.
The following is an example of a list of dates of which you’ll need to keep track. For the purpose of this example, let’s say your trademark registration was issued on May 20, 2015.
- Earliest date you will be allowed to file for your first renewal: May 20, 2024
- Due date of the first renewal: May 20, 2025
- Last possible date to file your first renewal while paying extra fees: November 20, 2025
The time between the due date of your first renewal and the due date that would involve extra fees essentially gives you a six-month grace period if you were for some reason delayed in filing your renewal or simply did not remember to do so in a timely manner. The extra fees you have to pay vary based on the year and the circumstances involved in your renewal.
Considering all this, it is highly recommended that you file your renewal relatively early so that you can avoid these extra fees and address any potential complications that might arise with your application. Should there be a problem, you do not want to run the risk of losing your registration because you do not have enough time left to correct and re-file.
To ensure the success of your renewal application and prevent unnecessary headaches, consult an experienced civil litigation and intellectual property lawyer.
Steven K. Hardy is Chair of the BoltNagi Intellectual Property Practice Group. BoltNagi is a widely respected and well-established intellectual property and business law firm proudly serving individuals, businesses and organizations throughout the U.S. Virgin Islands.