The Trademark Office doing another nice thing

Well, the Trademark Office at the USPTO has done another customer-friendly thing.  It has announced a plan to provide reminders to holders of US trademark registrations of the need for renewals.

When you obtain a US trademark registration, you need to remember to file renewals to keep the registration in force.  The first renewal is due between the fifth and sixth anniversaries of the registration date.  Subsequent renewals are due every ten years after registration.

For me personally, keeping track of something that needs to be done six or ten years in the future, like renewing a driver’s license or passport, is not easy.  For my firm, the need to keep track of such dates for clients prompts us to use two separate docketing systems, one in a computer and a second on on paper.  (I use our docket systems to keep track of the renewal dates for my driver’s license and passport!)  But even when we use two systems to keep track of trademark renewals, I still worry what if something were to go wrong and if we were to fail to remind a client of the need for a renewal?

This is why USPTO’s new program is so very welcome.  What USPTO says is that it will send out an email to the registrant as a reminder of the need to do a renewal.

You can see the details in this announcement.  The way it will work is that when the “first date” arrives for a renewal, USPTO will send one email as a reminder.  By “first date” we mean the fifth year after registration (for a six-year renewal), the ninth year after registration (for a ten-year renewal), the nineteenth year after registration (for a twenty-year renewal) and so on.  The email gets sent only if the USPTO has an email address in its files (this makes sense) and only if the USPTO has been authorized to communicate by email (which also makes sense).  Interestingly, if USPTO has more than one email address on file it will send to each of the email addresses.

The reminders will get sent starting “in late January 2015”.  The USPTO will not “backfill”;  if for example the five-year anniversary came and went for a particular registration before January 2015, then no reminder will get sent for that registration.

The alert reader will appreciate that this is an opportunity to bring things up to date for your active files.  Suppose for example you have one or more files in which you never got around to authorizing email communications?  Or suppose you have one or more files in which the email address on file is out of date?  The smart thing to do will be to e-file change-of-correspondence-address filings in such files.

Interestingly it is USPTO’s plan to send the reminder to each email address that is on file.  So for example if there are two or three email addresses on file for a particular registration, the reminder would get sent to each of them.

Kudos to the USPTO for doing this user-friendly thing!




One Reply to “The Trademark Office doing another nice thing”

  1. This is terrific. I have long thought that it would be an easy thing for the USPTO to do. They could easily do the same thing for Patent Maintenance fees too. In a few years this will make our malpractice carriers much happier.

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