1606.05    Fees for §9 Renewal Applications

1606.05(a)    Fee for Filing Application for Renewal Under §9

A renewal application must include the fee required by 37 C.F.R. §2.6  for each class for which renewal is sought.  15 U.S.C. §1059(a); 37 C.F.R. §2.183(b). See TMEP §§1401.02, 1401.04, and 1601.06 regarding use of international classification or prior United States classification for calculation of fees due. See TMEP §1606.05(c) regarding renewal applications filed with insufficient fees.

1606.05(b)    Grace Period Surcharge and Deficiency Surcharge

If the renewal application is filed during the six-month grace period, there is an additional grace period surcharge for each class for which renewal is sought. 15 U.S.C. §1059(a); 37 C.F.R. §2.183(c).

Under §9(a) of the Trademark Act, a deficiency surcharge is required for correcting a deficiency after expiration of the relevant deadline specified in §9 of the Act.  If the renewal application is filed within one year before the expiration of the registration, a deficiency surcharge is required for correcting deficiencies after the expiration date of the registration.  If the renewal application is filed during the grace period, a deficiency surcharge is required for correcting deficiencies after expiration of the grace period.  See TMEP §§1606.13-1606.13(c) for further information regarding the procedures, deadlines, and surcharge for correcting deficiencies.

Only a single deficiency surcharge is required for correcting one or more deficiencies in a multiple-class registration.  Similarly, only a single deficiency surcharge is required to correct several deficiencies within one renewal application or one combined filing under §8 and §9.  See TMEP §1604.19 regarding combined filings under §8 and §9.

The grace period surcharge applies only if no filing was made within the year before the expiration of the registration.  Someone who files within one year before the expiration of the registration, but corrects a deficiency after expiration of the registration, will be subject to the deficiency surcharge only.  On the other hand, someone who files during the grace period and cures a deficiency after the grace period expires will be subject to both the grace period surcharge (for the ability to file the renewal application during the grace period) and the deficiency surcharge (for the ability to correct a deficiency after the expiration of the grace period).  H.R. Rep. No. 105-194, 105th Congress, 1st Sess. 17 (1997).

1606.05(c)    Processing §9 Renewal Application Filed with Insufficient Fees

A §9 renewal application that does not include sufficient fees to cover the filing fee for all the classes to which the application pertains (and the grace period surcharge, where applicable), is deficient.  If the renewal application is filed within one year before the expiration date of the registration, the deficiency may be corrected before the expiration date of the registration for no fee, or after the expiration date of the registration with the deficiency surcharge required by §9(a) of the Act, 15 U.S.C. §1059(a).  If the renewal application is filed during the grace period, the deficiency may be corrected before expiration of the grace period for no fee, or after expiration of the grace period with the deficiency surcharge required by §9(a) of the Act. See TMEP §§1606.13-1606.13(c) for information about the procedures, deadlines, and surcharge for correcting deficiencies.

If the renewal application was filed without sufficient fee(s), but included an authorization to charge additional fees to a USPTO deposit account, the required fee (and grace period surcharge, where applicable) will be charged to the deposit account.  If the deposit account authorization was included with the renewal application as filed, and the deposit account had sufficient funds to cover the fee(s) in question, there is no fee deficiency and no deficiency surcharge is required.

An authorization to charge fees to a deposit account with insufficient funds to cover the fee is regarded as a deficiency.

If a check submitted as payment of a filing fee for a renewal application permitted to be filed on paper (see TMEP §301.01) is returned unpaid, or an EFT or credit card payment is refused or charged back by a financial institution, this is also regarded as a deficiency.  In addition to the deficiency surcharge (where applicable), there is a fee for processing the payment that was refused.  37 C.F.R. §2.6(b)(10), see TMEP §405.06.

If at least one fee is submitted for a multiple-class registration, but the fee is insufficient to cover all the classes and the class(es) to which the fee(s) should be applied are not specified, the Post Registration staff will issue a notice requiring either (1) the submission of additional fee(s) or (2) an indication of the class(es) to which the original fee(s) should be applied.  If the required fee(s) are not submitted and the class(es) to which the original fee(s) should be applied are not specified, the USPTO will presume that the fee(s) cover the classes in ascending order, beginning with the lowest numbered class and will delete any unpaid classes.  37 C.F.R. §2.183(e).  See TMEP §1608 regarding surrender of the registration as to class(es) that are omitted from a §9 renewal application.