The new year brings new and increased fees at the U.S. Patent and Trademark Office (USPTO). While the fee increases vary according to the type of submission, the USPTO has initiated changes that may impact strategic considerations when submitting and maintaining trademark filings.
Effective January 2, 2021, the following fees will apply to certain trademark filings:
Application and Application-Related Fees:
- Trademark Electronic Application System (TEAS) Standard Filing: $350 per class (up from $275 per class)
- TEAS Plus Filing: $250 per class (up from $225 per class)
The advent and ease of electronic trademark filing has led to an explosion of new filings by foreign and domestic applicants, resulting in an overwhelming number of applications and registrations that are taking space on the trademark registry. By increasing trademark application filing fees, the USPTO is likely encouraging applicants to think more seriously before filing new trademark applications. The increase in filing fees means applicants should be more discerning and careful about the classes in which trademark applications are filed and how corresponding goods and services are described. This may also be a net benefit to legitimate trademark owners or users, and may lead to the decrease of frivolous trademark filings.
Post-Registration Fees:
- Section 8 declaration for renewal: $225 per class (up from $125 per class)
- New fee for deleting goods and/or services after submitting a Section 8 declaration for renewal: $225 per class
A trademark owner must demonstrate that it has continued to use its mark in commerce five years after its registration and every ten years thereafter by submitting a Section 8 declaration for renewal. By increasing the renewal filing fees, the USPTO is likely signaling that it would like registrants to give more careful consideration to marginally-used trademarks before renewing a registration. Additionally, for the first time, the USPTO will charge a fee for deleting any goods and/or services from a registration after the submission of the Section 8 renewal filing. If the mark is not being used with all of the goods and/or services in the registration, those unused goods should be deleted when submitting the Section 8 renewal filing.
Petition to the Director and Letter of Protest Fees:
- Petition to the Director filed through TEAS: $250 (up from $100)
- Petition to revive an abandoned application filed through TEAS: $150 (up from $100)
- New fee for filing a letter of protest: $50 per application
Trademark Trial and Appeal Board Fees:
- Petition to cancel filed through Electronic System for Trademark Trial and Appeals (ESTTA): $600 per class (up from $400 per class)
- Notice of opposition filed through ESTTA: $600 per class (up from $400 per class)
- Initial 90-day extension request for filing a notice of opposition, or a second 60-day extension request for filing a notice of opposition, filed through ESTTA: $200 per application (up from $100 per application)
- Final 60-day extension request for filing a notice of opposition filed through ESTTA: $225 per class (up from $200 per class)
- New fee for second, and subsequent, requests for an extension of time to file an appeal brief in an ex parte appeal filed through ESTTA: $100 per application
- New fee for appeal briefs in an ex parte appeal filed through ESTTA: $200 per class
- New fee for requests for oral hearings: $500 per proceeding
There are several large fee increases across Trademark Trial and Appeal Board (TTAB) filings, possibly signaling the TTAB’s preference to resolve trademark conflicts as quickly as possible without intervention. For example, by continuing not to charge a fee for the first 30-day extension of time to file a trademark opposition proceeding but doubling the filing fee for subsequent extensions, the TTAB may be signaling a preference for parties to diligently resolve their disputes during the initial 30-day extension period. Further, these increased fees may also be signaling the TTAB’s preference for parties to contest the most critical classes as opposed to the entire application or registration.
The USPTO’s recent increase of trademark filing fees overwhelmingly indicates that applicants should think more seriously before filing new trademark applications or opposing or cancelling the trademark applications and registration of others. If your company is considering pursuing trademark protection, Morris, Manning & Martin LLP's IP team can guide you through strategically drafting the identification of goods and services for your trademark application to potentially avoid excess class fees. Additionally, giving strategic thought to trademark filing strategy on the front-end can be advantageous to avoid additional fees at the trademark registration renewal stage.
If you have any questions about this legal update, please contact a member of the MMM intellectual property group.
