How to keep your trademark renewal on track

Learn how to ensure your trademark renewals are completed on time and on budget, and avoid the risks of missing your trademark renewal deadlines.

Renewal Timeline

Trademark renewal needs to occur every 10 years, including for trademarks filed at the US Patent and Trademark Office (USPTO) and the EU Intellectual Property Office (EUIPO), as well as with international registrations filed through the World Intellectual Property Organization (WIPO) in the Madrid System.

However, in order for the trademark renewal to be successful, in some jurisdictions you have to demonstrate that it is in use, both for national applications and for those using the Madrid System. For example, the USPTO requires trademark holders to provide evidence that the trademark is in use (or an acceptable excuse for why it is not) between the fifth and sixth anniversary of registration in order to maintain the registration.

Most IP offices provide a grace period of six months after the official renewal date to complete a renewal, and many allow you to renew the trademark three months or more before the renewal date. International registrations using the Madrid System benefit from these grace periods.

The challenge arises when you have multiple marks with different renewal dates in multiple jurisdictions, all of which may have different rules on timings and the evidence required for renewal.

Developing an effective and robust agent network is critical to success, since your in-house team is unlikely to be able to manage everything, due not only to volume but also because most jurisdictions require a local agent to file, prosecute and renew trademarks. However, managing that agent network yourself may well be an inefficient use of your in-house resources – no one needs their head of trademarks to be transformed into a glorified administrative assistant.

Consider using an external trademark renewal service such as that provided by Questel. These have considerable advantages including allowing you to keep on top of your renewal timelines, taking on the management of your agent network if you want, or allowing you to benefit from preferential rates with its own network.

Trademark Renewal Fees

The cost of renewing a trademark varies considerably depending on the jurisdiction, both in terms of official fees and of course, in agent’s fees. At the EUIPO, for example, the fee for electronic renewal of a trademark is €850, with a further €50 for renewal in a second class, and €150 for each additional class.

In contrast, at the USPTO, electronic renewal costs $300 (€300) per class irrespective of the number of classes renewed, but with additional fees to file the necessary declarations of use per class.

Some jurisdictions charge much lower fees, such as India, where the basic cost of renewing a trademark is Rs.9000 (€112).

Beyond the official trademark renewal fees however, are the sometimes substantial costs of agents, which might be more than 50% of the official fees again.

While you may be able to negotiate those fees, there are generally cost advantages to leveraging a larger volume of applications – you can do this by using an external supplier such as Questel, which can tailor support for brand owners and benefits from a larger volume of work going to its agent network than an individual business would have, and therefore better pricing.

Trademark Renewal Risks

The importance of keeping on top of your trademark renewals cannot be overstated. In a worst-case scenario, failure to renew your trademark can result in a total loss of the mark, for example if a competitor or licensee seizes the opportunity and tries to register the lapsed mark. In this case, there may be other rights you can rely on to recover the mark, but it is certain to cost you considerable time and expense to do so.

Similarly, other applications may interfere with the registrability of a lapsed mark, whether in whole or in particular classes, while international portfolios run the risk of losing a mark in particular countries.

And even if none of these problems occur, and you are able to re-register your mark without difficulty, it’s sure to incur additional fees both at the trademark offices in question and from your agent network, while adding unnecessary stress to your day-to-day work.

All of these risks can effectively be removed by putting in place a robust trademark renewals plan.

Want to know more?  Contact us to enable you to cover not just your trademark renewals, but your domain and design portfolios all under one umbrella.