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:
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.