The following is an edited transcript of my video 25 Trademark Renewal Tips.
- Did you know a trademark can be renewed forever?
- The oldest USPTO trademark registration that’s still valid was registered in 1884 for the Samson Rope Technologies logo.
- You must know the deadline for the next renewal.
- You need to know where to look to find out about the deadlines, which is on the TSDR maintenance tab.
- Calendar that deadline—set it and forget it. Set it in your calendar several years from now when that renewal deadline is, so you have a reminder.
- Know that you can file up to a year before the deadline.
- Know that filing early is very valuable because it can help save headaches and money if the USPTO requires more information or issues a refusal.
- Know that there’s a grace period after the deadline, but it’s only six months and cannot be extended.
- Know about the USPTO’s audit program. This impacts a random selection of registrations and is particularly worth paying attention to if a registration has a long list of goods or services in it, and it’s useful to be proactive and submit extra evidence, covering as many of the items as possible.
- Know about a declaration of continued use, which is the filing that’s due after the initial six years of registration.
- Know about the renewals, which are due every 10 years after registration.
- Know about the difference between a Section 8 filing and a Section 15 filing. A section 15 filing relates to Incontestability,
- Know about the details of what a declaration of Incontestability means.
- Know about ownership changes. If ownership has changed since the registration was issued or the last renewal was filed, you need to know about the impact on that and how to deal with it.
- If the technology for what the goods or services are has changed over the years, you need to know about the impact on that, the possibilities to adjust it, the procedures for that, and how it impacts the renewal.
- Know about what to do if the mark has changed a little bit. Especially if it’s a logo – if it’s changed just a little bit, you might still be able to renew it, but you might have to submit some additional filings. You need to know about the rules, costs, and timing procedures related to that.
- Know about the specimen requirements when you file for renewal. What type of evidence is acceptable and good?
- Know about the address requirements, because those may have changed for many people if their registration was issued years ago. There are newer domicile address requirements that you need to know about.
- Know about the declaration requirements and what the signatory is attesting to when they sign the renewal.
- Know how the signature works, what the signature requirements are, and who can sign.
- Know about renewal scams. Lots of solicitations trying to take money that either is not for a legitimate service or is way in advance of when the renewal can even be filed.
- Know about the government filing fees related to the renewal filings. They each have different sets of fees.
- Know about the fee increases as of January, 2025.
- Know about a cited registration. If one has applied and there’s a registration cited as a likelihood of confusion, if that registration is in its grace period and has not yet been renewed, you can have the application suspended while you wait to see what happens. This can be very advantageous,
- Similarly, if the cited registration is in the renewal period, but not yet in the grace period, you can still get things suspended, but you would have to file an appeal to the trademark trial and appeal board (TTAB) and then request suspension.
For more about our trademark registration renewal services, see: https://www.erikpelton.com/services/trademark-renewals/
