By Kevin J. Spexarth and Emily M. Chilson
The United States Patent and Trademark Office (USPTO) increased several trademark fees effective January 2, 2021. The fee increases were originally published on November 17, 2020, as a USPTO Final Rule. (The Final Rule can be accessed in its entirety via the USPTO’s Final Rule webpage.) This marks the first time in nearly three years that trademark fees have increased. The USPTO determined that fee increases were necessary after reviewing its operations, and the USPTO is hoping that the fee increases will enhance the quality of trademark applications and examination thereof.
The fee increases may impact trademark owners’ strategic decisions. Brief summaries of notable fee increases are provided below. Please contact your Andrus attorney to discuss your trademark filing and enforcement strategies. Note that the fees provided below are per trademark international class and are in USD, unless otherwise noted.
Application Fees:
Fees for TEAS Standard applications increased by $75 to $350, and fees for TEAS Plus applications increased by $25 to $250. Given the substantial fee increase for TEAS Standard applications versus the nominal fee increase for TEAS Plus applications, the USPTO appears to be incentivizing applicants to file and prosecute applications electronically via the TEAS Plus application process. The USPTO also appears to be encouraging the use of the USPTO’s Trademark ID Manual to describe the goods and/or services listed in the TEAS Plus application. This is most likely because using identifications from the Trademark ID Manual lessens the burden on an Examining Attorney during examination by using common names and generally understood terminology.
Post Registration Fees:
Fees for Section 8 or Section 71 declarations of use, which are required after five years of registration and on every 10th anniversary, increased by $100 to $225. In addition, the USPTO is implementing a new $250 fee for deleting goods, services, and/or classes from a registration after a Section 8 or Section 71 declaration is filed, but before the declaration is accepted. These changes appear to be the USPTO’s attempt to encourage registrants to proactively determine which goods, services, and/or classes listed in their registration are no longer in use and to remove the unused goods, services, and/or classes from their registration before filing the Section 8 or Section 71 declaration. The earlier removal of unused goods or services may lead to a more up-to-date trademark registration database, clarifying for new trademark users and/or applicants what existing trademark registrations they should avoid.
Trademark Trial and Appeal Board (TTAB) Fees:
Certain fees related to TTAB procedures increased significantly. In particular, fees for petitions to cancel a registration and fees for notices of opposition to an application both increased by $200 to $600. Furthermore, extension requests for filing a Notice of Opposition (e.g., an initial 90-day extension request or a second 60-day extension request) increased by $100 to $200 per application, and the final 60-day extension request for filing a notice of opposition doubled to $400 per application. Several fees related to ex parte appeals before the TTAB also increased, and new fees were added for ex parte appeals. The USPTO appears to be incentivizing trademark owners to resolve issues outside of TTAB proceedings. The USPTO may also be attempting to reduce the number of new TTAB filings and thereby reduce the number of cases backlogged and/or pending before the TTAB.
Conclusion
Fee increases by the USPTO are inevitable; however, the recent fee increases can be managed, mitigated, and/or avoided by evaluating trademark filing procedures and enforcement strategies. Please contact your Andrus attorney with any questions you may have regarding the recent changes to trademark fees.
Andrus was recently featured in the FDL reporter for helping a Wisconsin high school STEM student obtain a patent on his novel fish hook design. Read more about Jared and his invention here: https://www.fdlreporter.com/story/news/2021/03/08/fond-du-lac-high-school-senior-awarded-u-s-patent/6084293002/.
Andrus attorney Christopher R. Liro was recently quoted in a Bloomberg News article on Federal Circuit judge nominee Tiffany Cunningham. Read the article here: Federal Circuit Nominee Brings Technical Chops, Collegial Style (bloomberglaw.com).
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