Completing a process which began one year and one week earlier, the United States Patent and Trademark Office (USPTO) published a final rule in the Federal Register on October 21, 2016 which will change the fees for forty-two different trademark filings. The upshot is that anyone in the very small universe of people who still submit trademark applications and other filings in paper form should plan to do as many filings as possible by January 14, 2017 (the date on which these new fees take effect) and should do their best to transition to electronic filing (especially via the “TEAS Plus” or “TEAS RF” filing methods).
The process took so long due to the Leahy-Smith America Invents Act, which requires several steps prior to changing trademark fees. The USPTO submitted a preliminary trademark mark fee proposal to the Trademark Public Advisory Committee (TPAC) on October 14, 2015, announcing an intention to set or increase certain trademark fees. The TPAC held a public hearing on November 3, 2015 and issued a report on November 30, 2015. Based on these comments, advice and recommendations received from the TPAC and public, the USPTO issued a Notice of Proposed Rulemaking on May 27, 2016. Four intellectual property organizations and seven individuals (as well as one law office) submitted comments.
While commenters both supported and objected to fee increases, most of the (small amount of) opposition stemmed from the hardship a fee increase places on individual filers and small businesses. The USPTO took these comments into account but noted that the majority of fee increases are actually for paper filings. Paper filings are exceedingly rare (in Fiscal Year 2015, only 0.4% of new applications were filed on paper and 95% of all fee paid requests were filed electronically) but have a disproportionate impact on the USPTO’s overall ability to process applications and other filings. Electronic filings, in addition to being more efficient because they eliminate the need for data entry by USPTO employees, are not particularly difficult for the filers to accomplish.
The end result are forty-two changes to the existing trademark fees, changes which are intended to achieve several goals, including:
Better aligning fees with the full cost of the relevant products and services;
Protecting the integrity of the trademark register by incentivizing more timely filing or examination of applications and other filings and more efficient resolution of appeals and trials; and
Promoting the efficiency of the process, in large part through lower-cost electronic filing options.
The changes can be broken down into five general categories:
Increased fees for filing initial applications in paper format
There are several changes relating to paper filings, many of which involve the process of initially obtaining a registration, including:
A sharp increase, from $ 225 to $ 600 per class, for paper filing of an initial trademark application;
A $ 75 increase in the cost to amend an application to allege use in commerce or to provide a statement of use, each of which is required for registration of a mark that was originally filed on an “intent to use” basis; the fee for these filings goes from $ 150 to $ 225 per class; and
There is also an increase of $ 75 for requesting a 6 month extension of the time in which to file a statement of use, which also goes from $ 150 to $ 225 (but the fee for filing this extension request electronically drops form $ 150 to $ 125).
Increased Fees for “TEAS” filings
There are also some increased costs for electronic filing, as the USPTO seeks to promote the use of “TEAS Plus” or “TEAS RF” filing procedures over “TEAS Regular” filings.
“TEAS” stands for “Trademark Electronic Application System.” But there are actually three different types of electronic filings under that system:
TEAS Regular is the starter model for online filing. None of the specialized information required for the other categories is required here;
TEAS RF (for “reduce fee”) requires that the filer include an E-mail address for USPTO-related correspondence and that any additional submissions (like responses to Office Action Notices) be filed electronically; and
TEAS Plus includes the requirements imposed on a TEAS RF filer and also requires that the “goods and/or services” described in the application be taken from the USPTO Trademark Identification Manual, as well as requiring certain technical statements be included up front, such as translation of foreign phrases, a claim of ownership, claims as to color in the marks and a description of the mark.
These fee changes include:
An increase in the fee for a regular TEAS filing form $ 325 to $ 400.
An increase in the additional fee applied when the USPTO must amend an application from “TEAS Plus” or “TEAS RF” back to TEAS, which goes from $ 50 to $ 125.
Increased fees for maintaining a registration via a paper filing
There is also a significant increase in the cost of filing the joint “Declaration of Continued Use and Incontestability” on paper (a mandatory filing between the 5th and 6th year of the first 10 year registration term) from $ 300 to $ 525 per class. In addition, there is a $ 100 per class increase, from $ 400 to $ 500, for filing a renewal of registration.
Increased fees for TTAB filings
Several Trademark Trial and Appeal Board fees increase. In some cases, the increases even apply to electronic filings:
The cost of filing a Notice of Opposition to an application (during what is called the “publication window) increases from $ 300 to $ 400 (if filed electronically) and from $ 300 to $ 500 (if filed in paper format); the same is true for filing a Petition to Cancel an existing registration;
The cost of filing an ex parte appeal to a rejected application from $ 100 to $ 200 (if filed electronically) and from $ 100 to $ 300 (if filed online); and
Finally, for the first time, there are fees for requesting an extension of time in which to file a Notice of Opposition, with fees ranging from $ 100 to $ 300 depending on the manner of filing.
There are also several miscellaneous fee increases which will have less day to day impact, such as establishing a deposit account to facilitate payments, requesting expedited service or overnight delivery, and certain copying charges, among others.
The basic takeaway is that anyone who regularly files trademark applications, has trademark registrations which will eventually require a Declaration of Continued Use and Incontestability or renewal, or who may be seeking to oppose another’s application or cancel another’s registration should familiarize themselves with the new fees. More importantly, these people should familiarize themselves with the electronic filing process, especially the TEAS Plus and TEAS RF processes. They should also consider making any filings affected by these changes sooner rather than later.
UPDATE: On November 7, 2016 the USPTO published a correction in the Federal Register to correct certain minor errors in the original document. In fact, these are SO minor, I almost neglected to mention them. They apply to:
- The transposing of certain fees in the tables entitled “Fees for Paper Filings” and “New Fees for Extensions of Time at the TTAB.”
- A typographical error in the table entitled “Other Trademark-Processing Fees [Extension of time to file a statement of use].”