1606    Renewal of Registration Under §9 of the Trademark Act

15 U.S.C. §1059  Renewal of registration.

  • (a) Subject to the provisions of section 8, each registration may be renewed for periods of 10 years at the end of each successive 10-year period following the date of registration upon payment of the prescribed fee and the filing of a written application, in such form as may be prescribed by the Director.  Such application may be made at any time within 1 year before the end of each successive 10-year period for which the registration was issued or renewed, or it may be made within a grace period of 6 months after the end of each successive 10-year period, upon payment of a fee and surcharge prescribed therefor.  If any application filed under this section is deficient, the deficiency may be corrected within the time prescribed after notification of the deficiency, upon payment of a surcharge prescribed therefor.
  • (b) If the Director refuses to renew the registration, the Director shall notify the registrant of the Director’s refusal and the reasons therefor.
  • (c) If the registrant is not domiciled in the United States the registrant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.

1606.01   Which Registrations Must Be Renewed Under §9

1606.01(a)   Registrations Based on Applications Under §1 or §44 Must Be Renewed Under §9

Section 9 of the Trademark Act, 15 U.S.C. §1059, requires that registrations resulting from applications based on §1 or §44 of the Trademark Act be renewed periodically.  See TMEP §§1606.02 et seq . for information about the requirements for renewal under §9.

1606.01(b)   Section 9 Does Not Apply to Extensions of Protection of International Registrations to the United States

Section 9 of the Trademark Act does not apply to registered extensions of protection of international registrations to the United States.  Renewal of international registrations must be made at the IB, in accordance with Article 7 of the Madrid Protocol.  37 C.F.R. §7.41(a).  See TMEP §1614 for further information about renewal of international registrations.

1606.01(c)   Renewal of Registrations Issued Under Prior U.S. Trademark Acts Must Be Renewed Under §9

An application for renewal of a registration issued under a prior Act, where required, must meet all the requirements of §9 of the Act and 37 C.F.R. §2.183.   See TMEP §1602.02 regarding the renewal of registrations issued under the Acts of 1881 and 1905, and TMEP §1602.03 regarding the renewal of registrations issued under the Act of 1920.

1606.02   Requirements for Renewal Under §9

37 C.F.R. §2.183  Requirements for a complete renewal application

A complete renewal application must include:

  • (a) A request for renewal of the registration, signed by the registrant or the registrant’s representative;
  • (b) The fee required by §2.6 for each class;
  • (c) The additional fee required by §2.6 for each class if the renewal application is filed during the six-month grace period set forth in section 9(a) of the Act;
  • (d) If the renewal application covers less than all the goods or services in the registration, a list of the particular goods or services to be renewed.
  • (e) If at least one fee is submitted for a multi-class registration, but the class(es) to which the fee(s) should be applied are not specified, the Office will issue a notice requiring either the submission of additional fee(s) or an indication of the class(es) to which the original fee(s) should be applied.  Additional fee(s) may be submitted if the requirements of §2.185 are met.  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 Office will presume that the fee(s) cover the classes in ascending order, beginning with the lowest numbered class.
  • (f) Renewals of registrations issued under a prior classification system will be processed on the basis of that system, unless the registration has been amended to adopt international classification pursuant to §2.85(e)(3).

1606.03   Time for Filing §9 Renewal Application

The application for renewal must be filed within one year before the expiration of the registration, or within the six-month grace period after the expiration of the registration with an additional grace period surcharge.  If no renewal application is filed before the end of the grace period, the registration will expire.  15 U.S.C. §1059(a); 37 C.F.R. §2.182.  See TMEP §§1602 et seq . as to the term of a registration.

A renewal application may be filed on the anniversary dates of the statutory period.

Example :  For a registration issued on November 5, 1998, an application for renewal may be filed as early as November 5, 2007, and as late as November 5, 2008, before entering the six-month grace period.

Under 37 C.F.R. §2.195(a)(2), a renewal application filed through TEAS is considered to have been filed on the date the USPTO receives the transmission, regardless of whether that date is a Saturday, Sunday, or Federal holiday within the District of Columbia.  When the renewal application is submitted electronically, TEAS almost immediately displays a "Success" page that confirms receipt.  This page is evidence of filing should any question arise as to the filing date of the application, and it may be printed or copied-and-pasted into an electronic record for storage.  TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.

An application for renewal of a registration filed on paper is considered timely if it is received in the USPTO by the due date or if it is mailed or transmitted by the due date with a certificate of mailing or facsimile transmission in accordance with 37 C.F.R. §2.197.   See TMEP §§305.02 and 306.05 for certificate of mailing and certificate of facsimile transmission procedures to avoid lateness.

The Director has no authority to waive the deadline for filing a proper §9 renewal application.   See In re Holland American Wafer Co ., 737 F.2d 1015, 1018, 222 USPQ 273, 275 (Fed. Cir. 1984) ("Timeliness set by statute is not a minor technical defect which can be waived by the Commissioner.").   Cf. Checkers Drive-In Restaurants, Inc. v. Commissioner of Patents and Trademarks. , 51 F.3d 1078, 1085, 34 USPQ2d 1574, 1581 (D.C. App. 1995), cert. denied 516 U.S. 866 (1995) ("[I]n establishing cancellation as the penalty for failure to file the required affidavit [under 15 U.S.C. §1058], Congress made no exception for the innocent or the negligent.  Thus, the Commissioner had no discretion to do other than cancel Checkers's service mark registration in this case").

1606.03(a)   Premature Filing of §9 Renewal Application

A renewal application may not be filed before the period specified in §9 of the Act.   In re Holland American Wafer Co. , 737 F.2d 1015, 222 USPQ 273 (Fed. Cir. 1984).  If an application for renewal is filed more than one year before the expiration date of the registration, the USPTO will advise the registrant:  (1) that the renewal application is premature; (2) of the appropriate time period for filing a renewal application; (3) that the fees submitted will be held; and (4) that the registrant may file a new renewal application at the appropriate time or may request a refund at any time.  The prematurely filed renewal application will be placed in the record for informational purposes only.  A timely renewal application must be filed before the end of the grace period, or the registration will expire and the fees will be refunded.  There is no deficiency surcharge for filing a timely substitute renewal application.

1606.04   Form for Filing §9 Renewal Application

To expedite processing, it is recommended that the owner file the renewal application through TEAS.  

Because the deadlines for filing renewal applications coincide with the deadlines for filing affidavits or declarations of use or excusable nonuse under 15 U.S.C. §1058(a)(2) at the end of each ten-year period following the date of registration, the USPTO has created a form for filing a §8 affidavit or declaration combined with a §9 renewal application.  See TMEP §1604.19 for more information about combined filings under §§8 and 9 of the Act.

The form for the combined filing is available through TEAS at http://www.uspto.gov.  Alternatively, the owner can call the Trademark Assistance Center at (571) 272-9250 or (800) 786-9199 to obtain a pre-printed form that can be filled out and mailed, faxed, or hand-delivered.

The USPTO’s §9 renewal form cannot be used to renew an international registration.  See TMEP §1614 for information about renewal of international registrations.

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 of goods/services 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. §§2.6 and 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 et seq . 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 et seq . 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 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)(12).   See TMEP §405.06 .

If at least one fee is submitted for a multiple-class registration, but the class(es) to which the fee(s) should be applied are not specified, the Post Registration staff will issue a notice requiring either the submission of additional fee(s) or 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.  

1606.06   Ownership and Who May File §9 Renewal Application

The Trademark Act and the Trademark Rules of Practice do not require that a renewal application be filed by the owner of the registration.

Therefore, if the renewal applicant is not the owner of record, the USPTO does not require that the renewal applicant show continuity of title from the original registrant.

However, registrations are renewed in the name of the party who is the owner of record of the registration, as shown in the Trademark database.  The registration will be renewed in the name of a new owner only if the owner:  (1) records an assignment or other document of title with the Assignment Recordation Branch; and (2) notifies the Post Registration staff at the time the renewal application is filed that the document has been recorded with the Assignment Recordation Branch.  See TMEP §§504 et seq . regarding the circumstances in which the "Ownership" field in the Trademark database will be automatically updated after recordation of a document with the Assignment Recordation Branch, even if the new owner does not notify the Trademark Operation that the document has been recorded.

See TMEP §502.03 regarding issuance of a new certificate in the name of a new owner.

1606.07   Execution of §9 Renewal Application

Under 37 C.F.R. §2.183(a), a renewal application must be signed by "the registrant or the registrant’s representative."  Verification is not required.

Generally, the USPTO does not question the authority of the person who signs a renewal application, unless there is an inconsistency in the record as to the signatory’s authority to sign.

The Trademark Act and the Trademark Rules of Practice do not require that a renewal application be executed within any particular time period.  Therefore, the USPTO will accept undated renewal applications, and will not issue any inquiry or requirement regarding the date of execution of a renewal application.

See TMEP §1604.08(b) regarding the date of execution of the §8 affidavit or declaration and §1606.12 regarding signature of a response to an Office action issued in connection with a renewal application.

1606.08   Goods and/or Services Set Forth in §9 Renewal Application

1606.08(a)   Listing of Goods and/or Services Required Only for Partial Renewal

Neither the Trademark Act nor the Trademark Rules of Practice requires a listing of the goods/services in the registration, if the renewal application covers all the goods/services in the registration.  However, if the renewal application covers less than all the goods/services, the renewal application must include a list of the goods/services for which renewal is sought.  37 C.F.R. §2.183(d).

1606.08(b)   No Goods or Services Listed

If no goods or services are specified in the renewal application, it will be presumed that renewal is sought for all the goods/services in the registration.

1606.08(c)   Some Goods and/or Services Listed

If the renewal application lists only some of the goods/services set forth in the registration, it will be presumed that renewal is sought for only the goods/services listed, and the goods/services omitted from the renewal application will be deleted from the registration.

1606.08(d)   Goods and/or Services Not Listed in Registration May Not Be Listed in Renewal Application

Goods/services that are not listed in the registration may not be listed in the renewal application.

1606.09   Affidavit of Use in Commerce or Excusable Nonuse Not Required

The Trademark Act does not require that a renewal application include an affidavit or declaration of use in commerce, a specimen of use, or a showing that any nonuse is due to special circumstances that excuse the nonuse, and not due to any intention to abandon the mark.   See notice at 1228 TMOG 187  (Nov. 30, 1999).  See also TMEP §§1604 et seq. regarding affidavits or declarations of use or excusable nonuse under 15 U.S.C. §1058.

1606.10   Designation of Domestic Representative by Foreign Applicant for Renewal Under §9

A renewal applicant who is not domiciled in the United States may set forth the name and address of a United States resident on whom notices or process in proceedings affecting the registration may be served.  The USPTO encourages parties who do not reside in the United States to designate domestic representatives.  15 U.S.C. §1059(c).   See TMEP §610.

The designation should be signed by the individual registrant, someone with legal authority to bind a juristic registrant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner.  In the case of joint owners who are not represented by a qualified practitioner, all must sign.  37 C.F.R. §2.193(e)(8); TMEP §611.03(h) .

1606.11   Office Actions and Notices Regarding §9 Renewal Application

Upon receipt of a §9 renewal application, the prosecution history of the registration in the Trademark database is updated to show that the renewal application has been filed.

When a renewal application is filed electronically, TEAS almost immediately displays a "Success" page that confirms receipt.  This page is evidence of filing should any question arise as to the filing date of the document, and it may be printed or copied-and-pasted into an electronic record for storage.  TEAS also separately sends an e-mail acknowledgement of receipt, which includes a summary of the filed information.  For renewal applications filed on paper, no acknowledgment of receipt of the application is sent before it is examined.

If the renewal application is examined and found acceptable, the USPTO sends the registrant a notice that the registration is renewed.  The USPTO does not issue an Updated Registration Certificate ("URC") for renewed registrations.

If the renewal application is not acceptable, the USPTO issues an action stating the reasons for refusal.  15 U.S.C. §1059(b); 37 C.F.R. §2.184(a).

The propriety of the original registration is not re-examined on renewal.

1606.12   Response to Office Action

Deadline .  If the renewal application is not acceptable, the USPTO will notify the renewal applicant of the reason(s) for refusal.  15 U.S.C. §1059(b); 37 C.F.R. §2.184(a).  The registrant must file a response to a refusal of renewal within six months of the issuance date of the Post Registration Office action, or before the expiration date of the registration, whichever is later.  If no response is filed within this time period, the registration will expire, unless time remains in the grace period under §9(a) of the Act, 15 U.S.C. §1059(a).  If time remains in the grace period, the registrant may file a complete new renewal application, with a new fee.  37 C.F.R. §2.184(b)(1).

The registrant may file a petition to the Director under 37 C.F.R. §§2.146(a)(5) and 2.148 to waive 37 C.F.R. §2.184(b)(1) and accept a late response to an Office action.  However, the Director will waive a rule only in an extraordinary situation, where justice requires and no other party is injured.   See TMEP §1708.  The failure to receive an Office action has been found to be an extraordinary circumstance that warrants a waiver of 37 C.F.R. §2.184(b).  See TMEP §1712.02(b). The "unintentional delay" standard of 37 C.F.R. §2.66 does not apply to a registrant’s failure to respond to an Office action issued in connection with a renewal application.   TMEP §1714.01(f)(ii)(D) .

Signature .  The response must be signed by a qualified practitioner, or by the registrant or someone with legal authority to bind the registrant.  If the registrant is represented by a qualified practitioner, the practitioner must sign.  37 C.F.R. §§2.193(e)(2)(i) and 11.18(a).  If the registrant is not represented by a qualified practitioner, the individual owner or someone with legal authority to bind a juristic owner must sign.  37 C.F.R. §§2.184(b)(2) and 11.14(e); TMEP §611.03(b) .  In the case of joint registrants who are not represented by a qualified practitioner, all must sign.  37 C.F.R. §2.193(e)(2)(ii).  See TMEP §§611.06 et seq . for guidelines on persons with legal authority to bind various types of juristic entities, and TMEP §§602 et seq . regarding persons who are qualified to represent others before the USPTO in trademark cases.

When it appears that a response to an Office action is signed by an improper party, the Post Registration staff must treat the response as incomplete and follow the procedures in TMEP §§611.05 et seq .

Correction of Deficiencies .  The renewal applicant may correct deficiencies, if the requirements of 37 C.F.R. §2.185 are met.  See TMEP §§1606.13 et seq . for information about the procedures, deadlines, and surcharge for correcting deficiencies.

1606.13   Correction of Deficiencies in §9 Renewal Applications

37 C.F.R. §2.185  Correcting deficiencies in renewal application.

  • (a) If the renewal application is filed within the time periods set forth in section 9(a) of the Act, deficiencies may be corrected, as follows:
  • (1) Correcting deficiencies in renewal applications filed within one year before the expiration date of the registration.  If the renewal application is filed within one year before the expiration date of the registration, deficiencies may be corrected before the expiration date of the registration without paying a deficiency surcharge.  Deficiencies may be corrected after the expiration date of the registration with payment of the deficiency surcharge required by section 9(a) of the Act and §2.6.
  • (2) Correcting deficiencies in renewal applications filed during the grace period.  If the renewal application is filed during the six-month grace period, deficiencies may be corrected before the expiration of the grace period without paying a deficiency surcharge.  Deficiencies may be corrected after the expiration of the grace period with payment of the deficiency surcharge required by section 9(a) of the Act and §2.6.
  • (b) If the renewal application is not filed within the time periods set forth in section 9(a) of the Act, the registration will expire.  This deficiency cannot be cured.

1606.13(a)   Correcting Deficiencies in §9 Renewal Applications Filed Within the Year Before the Expiration Date of the Registration

If the renewal application is filed within one year before the expiration date of the registration, deficiencies may be corrected before the expiration date without paying a deficiency surcharge, or after the expiration date with payment of the deficiency surcharge required by §9(a) of the Act.  37 C.F.R. §2.185(a)(1).

Any deficiency must be cured within the set period for response to the Office action, i.e., within six months of the issuance date of the action, or before the expiration date of the registration, whichever is later.  If no response is filed within this time period, the registration will expire, unless time remains in the grace period.  If time remains in the grace period, the registrant may file a complete new renewal application, with a new fee.  37 C.F.R. §2.184(b).   See TMEP §1606.12 .

1606.13(b)   Correcting Deficiencies in Renewal Applications Filed During the Grace Period  

If the renewal application is filed during the grace period, deficiencies may be corrected before the expiration of the grace period without paying a deficiency surcharge, or after the expiration of the grace period with the deficiency surcharge required by §9(a) of the Act.  37 C.F.R. §2.185(a)(2).

Deficiencies must be cured within six months of the issuance date of the Office action.  37 C.F.R. §2.184(b).   See TMEP §1606.12 .

1606.13(c)   Late Filing Cannot Be Cured

If the renewal application is not filed within the statutory filing period (which includes the grace period), the registration will expire.  Filing after the expiration of the grace period is not a deficiency that can be cured, even with a deficiency surcharge.  37 C.F.R. §§2.182 and 2.185(b).

1606.14   Petition Under 37 C.F.R. §2.146

The action of the Post Registration staff on a §9 renewal application may not be appealed to the Trademark Trial and Appeal Board, but the registrant may file a petition to the Director for review of the action under 37 C.F.R. §§2.146(a)(2) and 2.186(b).  A petition fee is required by 37 C.F.R. §§2.6 and 2.146(c).  See TMEP §§1705–1705.09 regarding petition procedure.

1606.14(a)   Response to Examiner’s Refusal Required Before Petition

A response to the initial refusal to accept a renewal application is required before filing a petition, unless the Post Registration staff directs otherwise or there is no time remaining to respond to the refusal.  37 C.F.R. §2.186(a).

If the Post Registration staff continues the refusal of the renewal application, the registrant may file a petition for review of the action under 37 C.F.R. §2.146(a)(2), within six months of the issuance date of the action continuing the refusal. See TMEP §1705.04.  If the registrant does not file a petition within six months of the issuance date, the registration will expire.  37 C.F.R. §2.186(b).

1606.14(b)   Decision on Petition is Final Action of the USPTO

The decision on a petition under 37 C.F.R. §2.146 is the final action of the USPTO.  In the absence of a request for reconsideration of the decision ( see TMEP §1606.14(c) ), or an appeal to federal court ( see TMEP §1606.14(d)) within two months of the issuance date of the decision on petition, the registration will expire.

1606.14(c)   Request for Reconsideration of Denial of Petition

Under 37 C.F.R. §2.146(j), if a petition is denied, the petitioner may file a request for reconsideration within two months of the issuance date of the decision denying the petition.  A second petition fee must be paid with the request for reconsideration.   See TMEP §1705.08 regarding requests for reconsideration of petition decisions.

1606.14(d)   Appeal to Federal Court

The registrant may appeal to the United States Court of Appeals for the Federal Circuit or commence a civil action for review of the decision on petition.  15 U.S.C. §§1071(a)(1) and (b)(1); 37 C.F.R. §§2.145(a) and 2.145(c).

The deadline for filing an appeal or commencing a civil action is two months from the issuance date of the decision on petition.  15 U.S.C. §§1071(a)(2) and (b)(1); 37 C.F.R. §2.145(d)(1).  Under 37 C.F.R. §2.145(d)(2), one day is added to any two-month period that includes February 28.

Under 37 C.F.R. §2.186(c), a decision on petition is necessary before the registrant can file an appeal or commence a civil action in any court.

1606.15   Section 9 Renewal Application Combined with Affidavit or Declaration of Use or Excusable Nonuse

A §9 renewal application and a §8 affidavit or declaration may be combined into a single document, if the document meets the requirements of both §§8 and 9 of the Act.  37 C.F.R. §2.166.  See TMEP §1604.19 for further information about combined filings under §§8 and 9.