Lower Cost.  Lower Risk.  Less Stress.

Lots of unexpected issues can come up during a trademark renewal whether you do it yourself or use a qualified professional…issues which often need time to resolve and might take a couple of steps, even additional filings, before your renewal can be processed.

Here are just a few of the surprises I have encountered in my experience:

  • Chain of ownership.  It is not uncommon to find an error in a trademark assignment filing such as a typo in the assignment contract…perhaps an inverted serial number or misspelled owner name.  In some countries assignments are merely recorded and not verified. Then you have to prove your ownership and possibly file a corrected assignment.
  • In countries which keep a trademark applicant/owner database, a separate address update might be required before a renewal application can be processed.
  • Because you have discovered, after submitting unacceptable proof of use, that you need to refile your trademark because your logo/colors/font/words has changed.  You have “substantially altered the mark as registered”.
  • It is a common strategy to base a re-filing on the already registered mark and let the registered mark get cancelled after the new one is registered…but you need to start this strategy at the very beginning of the free renewal period.
  • You must take additional steps to respond to a trademark office action because you made a clerical mistake…such as incorrect signature or unacceptable sample or no domestic address…most trademark owners doing it themselves do not address these office actions in a time efficient manner, not realizing they might end up in the late period and incur additional fees, or lose the trademark altogether.
  • A secret USPTO study and your trademark is part of it: 
    www.uspto.gov/trademarks/notices/Post_Registration_Proof_of_Use.doc


Sometimes these unexpected fixings and filings can take so long that you find yourself out of the free period looking at late filing fees.  It is hard to know the state of the backlog at the trademark office, and sometimes things get lost in the “post registration maintenance filing” process, even when processed electronically.  Trademark owners should keep well on top of their trademarks during the renewal process in all countries.

The earlier you file your trademark renewal, the less likely you are to unexpectedly find yourself in the late period filing penalty fees and/or missing your deadline as a consequence, which equals: Lower Cost.  Lower Risk.  Less Stress.
 
 
First of all, most countries do not call them “renewals”, but that is what I am calling any “post registration maintenance filing” required to keep your trademark alive.

Lots of countries have on-line renewal options, many of which seem very easy to use, some of which indeed are, but after you check out the on-line renewal system and think, “Oh, this looks easy!” consider the following:
  • Do you have a local address in that country that will receive and forward your mail in a timely manner?
  •  Do you still use your trademark in the manner in which it was registered? (USA, for example, requires samples which must be accurate or a deficiency fee can be charged by USPTO)
  • Can you provide the necessary non-English translations?
  • Do you have access to foreign currency payment options and/or legalization services?


Then you need to determine exactly when to file the renewal.  It’s tricky, and every country is just a little different:
  • USA after 5, 9, 19, etc years, 1 year free renewal period, 6 month late period with penalty fee (there are 3 on-line options, which do you use when ?)
  •  EU every 10th year, 6 month free renewal period, and a 25% late fee for a 6 month grace period.
  • China & South Korea every 10th year, and all filings, dead and alive, must have a correct address on file before the renewal can be accepted, that address change will cost you extra.
  • And…from when ?  From date of application or date of registration?  It could be one as likely as the other varying by country.

There is also a misconception that you can make changes to your trademark at renewal time with the trademark office.  Globally, I have found this is mostly untrue.  You can file an additional Petition in some countries to request an amendment, for an additional fee of course. 

This might allow you to change very small things like spaces or hyphens or drop a disclaimed word, but you cannot change your logo or your colors or your font or add goods…nothing like that ! 

You are not allowed to “substantially alter the mark as registered”.  If you don’t know what that means, this is yet another good reason to use a reliable professional to manage and maintain your trademarks to keep your brand strong, worldwide.