U.S. Trademark Office proposes fee increases

Originally published by Andrea Shannon (US).

Brand owners should be aware that the U.S. Patent and Trademark Office (USPTO) has proposed an increase of its trademark registration and filing fees. The proposed rule was published in the Federal Register, with the period for public comment expiring on July 11, 2016. See Trademark Fee Adjustment.

The USPTO stated that the proposed fee adjustments are intended to cover rising processing costs and administrative expenses, as well as upgrades to the USPTO’s IT systems. The USPTO reported that, in fiscal year 2015, it received more than 500,000 class filings, a number which is projected to continue increasing each year.

The full schedule of the proposed fee increases is available on the USPTO’s website. A few notable changes include:

• an increase from $375 to $600, per class, for paper applications, in an attempt to encourage online filings;
• a $50 increase in Section 8 affidavits of use of a trademark filed through the Trademark Electronic Application System (TEAS);
• a $75 increase for online TEAS applications (from $325 to $400), although the fees for TEAS Reduced Fee (RF) and TEAS Plus applications ($275 and $225, respectively) are not scheduled to change; and
• a new $100-$200 fee for electronically filing a request for an extension of time to file a notice of opposition, a filing which previously did not carry a fee.

The USPTO stated that the fee increase for the online TEAS application would apply to both U.S. and foreign filers, as well as to applications submitted under the Madrid Protocol as requests for extension of protection and subsequent designation.

The USPTO plans to increase fees for submitting affidavits under sections 8 and 71 in order to support increased legal examination. In 2012, the USPTO began the Post Registration Proof of Use Pilot Program, during which it reviewed 500 registrations (for which section 8 or 71 Declarations of Use were filed) in order to assess the accuracy and integrity of the trademark register as to the actual use of marks with the goods and/or services identified in their registrations. According to the notice, the USPTO’s findings in the Pilot Program revealed a need for additional review of these filings in order to identify and remove registrations with insufficient maintenance filings to increase the trademark register’s accuracy.

The filing fees for section 8 and section 71 affidavits are set to increase from $100 to $250 for paper filings, and $100 to $150 for TEAS filings. There will also be an increased surcharge for filing either affidavit on paper during the grace period, per class, from $100 to $200. Correcting a deficiency in either affidavit will also increase from $100 to $200.

The fees for several other filings are generally set to increase by $100-$200. For paper filings, the fee for certifying an international application based on a single application or registration, or more than one basic application or registration, will see a per-class increase of $100. A few new fees have been added, such as a $40 fee for overnight delivery, and a $160 fee for expedited service. Other fees, like those for establishing a deposit account, self-service copy charges, and labor charges, have been eliminated, sometimes because a third party will be providing the service.

The proposed schedule of fees was developed with feedback from the Trademark Public Advisory Committee (TPAC), a group composed of IP practitioners that oversees the policies, budget, and performance of the USPTO and advises the USPTO Director. Nov. 2015 Transcript and Report.

Among its recommendations, the TPAC suggested that the USPTO provide a mechanism for applicants to request a waiver of the surcharge incurred for paper filings should the online system crash, or if the nature of the submission requires a paper filing. In response, the USPTO noted that the appropriate mechanism for requesting a waiver of a rule is to file a petition to the Director. Notably, the fee for filing a paper petition to the Director is set to increase from $100 to $200. So, if the online system goes down, the waiver application may also crash—potentially resulting in an extra fee for requesting the waiver.

Additionally, the TPAC supported new fees for filing a request for an extension of time to oppose a published mark ($200 for paper filings, $100 for filings through the Electronic System for Trademark Trials and Appeals (ESTTA) under section 2.102(c)(3); $300 for paper filings, $200 for filings through ESTTA under section 2.102(c)(1)(ii) or (c)(2)). The report noted that these fees would encourage potential opponents to act more quickly and to seek resolution earlier in the process.

Comments on the proposed rule can be submitted via email to TMFRNotices@uspto.gov until July 11, 2016 and will be available for public inspection on the USPTO’s website and the Federal eRulemaking Portal.

The author gratefully acknowledges the assistance of Stephanie Schmidt.

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