U.S. Patent and Trademark Office Set to Increase Trademark Fees
Highlights
- The Director of the U.S. Patent and Trademark Office (USPTO) notified the Trademark Public Advisory Committee (TPAC) on May 8, 2023, of the USPTO's intent to revise trademark-related fees.
- The USPTO's preliminary fee proposal includes fee increases for most trademark-related filings, including initial applications, amendments to allege use, statements of use, petitions to the Director, petitions to revive an application, letters of protest, renewal applications and various other post-registration maintenance filings.
- The USPTO's proposed revisions to trademark-related fees coincides with the USPTO's transition to a new single-application filing system, which eliminates the existing Trademark Electronic Application System (TEAS) Standard and TEAS Plus filing options.
- A hearing will be held on June 5, 2023. Anyone wishing to present oral testimony at the hearing must submit a request by May 26, 2023. Additional opportunity to comment will occur at a later date.
The Director of the U.S. Patent and Trademark Office (USPTO) has notified the Trademark Public Advisory Committee (TPAC) of the USPTO's intent to restructure existing trademark fees and released its preliminary trademark fee proposal, along with fee-related materials. The proposed changes would make it more expensive for applicants to write their own descriptions of goods and services in ways not defined in the USPTO Trademark ID Manual. Additionally, proving use in commerce after an application will also become more costly, as will renewal and maintenance fees.
The decision to overhaul the existing trademark fee schedule comes after the USPTO's completion of a comprehensive trademark fee review. This review revealed two principal themes. First, forecasts for aggregate revenue using current demand estimates are lower than prior forecasts, which the USPTO believes is caused by lower-than-expected demand coinciding with recent trademark filing and renewal pattern changes. Second, overall USPTO operating costs have increased due to rising inflation in the U.S., resulting in the need to generate more revenue to finance the USPTO's operating shortfall.
New Single-Application Filing System and Related Surcharge Fees
The new fee proposal is timed to coincide with the transition to a new single-application filing system. The Trademark Electronic Application System (TEAS) Standard and TEAS Plus applications, along with their associated fees, will be discontinued and replaced with a single, basic application filing option with various premium surcharges. The newly proposed fee structure is:
|
Fee Category |
Description |
Current Fee |
Proposed Fee |
Dollar Change |
Percent Change |
|
Application Filings |
Basic application, per class |
$250 |
$350 |
$100 |
40 percent |
|
Application Filings |
Fee for insufficient information, per class |
N/A |
$100 |
N/A |
N/A |
|
Application Filings |
Fee for using custom goods and service identifications not contained in the Trademark Next Generation ID Manual (using the free-form text box), per class |
N/A |
$200 |
N/A |
N/A |
|
Application Filings |
Long identifications of goods and/or services, for each additional 1,000 characters in excess of the initially provided 1,000 characters, per class |
N/A |
$200 |
N/A |
N/A |
Moreover, in an effort to align foreign and domestic application fee schedules, the USPTO has proposed adjustments to fees paid for foreign Madrid Protocol-based applications filed under Section 66(a) of the Trademark Act.
|
Fee Category |
Description |
Current Fee |
Proposed Fee |
Dollar Change |
Percent Change |
|
Application Filings |
Basic application – Section 66(a), per class |
N/A |
$350 |
N/A |
N/A |
|
Application Filings |
Basic application – filing a subsequent designation under Section 66(a), per class |
N/A |
$350 |
N/A |
N/A |
|
Application Filings |
Fee for insufficient information, per class |
N/A |
$100 |
N/A |
N/A |
|
Application Filings |
Fee for using custom goods and service identifications not contained in the Trademark Next Generation ID Manual (using the free-form text box), per class |
N/A |
$200 |
N/A |
N/A |
|
Application Filings |
Long identifications of goods and/or services, for each additional 1,000 characters in excess of the initially provided 1,000 characters, per class |
N/A |
$200 |
N/A |
N/A |
The USPTO expects that these collective surcharges will offset the higher operating costs incurred from excessively and unnecessarily long identifications and will also incentivize "complete applications," improving efficiency and reducing pendency times.
Other Fee Increases
Additionally, the USPTO has released proposals to increase or set the following trademark fees:
|
Fee Category |
Description |
Current Fee |
Proposed Fee |
Dollar Change |
Percent Change |
|
Intent to Use/Use Fees |
Amendment to allege use (AAU), per class |
$100 |
$200 |
$100 |
100 percent |
|
Intent to Use/Use Fees |
Statement of use (SOU), per class |
$100 |
$150 |
$50 |
50 percent |
|
Intent to Use/Use Fees |
First, second and third request for six-month extension for filing an SOU, per class |
$125 |
$125 |
$0 |
0 percent |
|
Intent to Use/Use Fees |
Fourth and subsequent requests for six-month extension for filing an SOU, per class |
$125 |
$250 |
$125 |
100 percent |
|
Trademark Processing |
Petition to the Director |
$250 |
$400 |
$150 |
60 percent |
|
Trademark Processing |
Petition to revive an application |
$150 |
$250 |
$100 |
67 percent |
|
Trademark Processing |
Letter of protest |
$50 |
$250 |
$200 |
400 percent |
|
Maintenance Filings |
Section 9 renewal application, per class |
$300 |
$350 |
$50 |
17 percent |
|
Maintenance Filings |
Section 8 declaration, per class |
$225 |
$300 |
$75 |
33 percent |
|
Maintenance Filings |
Section 15 declaration, per class |
$200 |
$250 |
$50 |
25 percent |
|
Madrid Protocol Fees |
Section 71 declaration, per class |
$225 |
$300 |
$75 |
33 percent |
Though the fee increases may benefit the USPTO at large, this benefit comes at the expense of trademark owners and applicants. The new "insufficient information" penalty is particularly concerning; the USPTO has not clarified what constitutes "insufficient information" and whether each examining attorney will have unilateral authority to issue the penalty. Although these individual determinations may at some point be appealable to the Director (this has yet to be confirmed), such Petitions to the Director will cost a new and additional $400 fee. Applicants, already facing inconsistent examination refusals and delayed examination timelines, may now face another inconsistently applied standard, and its associated penalty, with their only recourse an uncertain appeal and payment of yet another fee.
Takeaways
These proposals are not final. However, they do mark the USPTO's intent to conduct an overhaul of its existing fee structures in an effort to generate additional revenue for the agency and to drive applicants to use standardized descriptions of goods and services. Trademark owners, industry groups and legal professionals should consider submitting comments and suggestions on the new trademark proposals, which can be directed to the USPTO according to the following timelines:
- June 5, 2023: TPAC Hybrid Public Hearing from 1 to 3 p.m. ET. To present oral testimony at the hybrid public hearing, a request must be submitted in writing to TMExec@uspto.gov by May 26, 2023.
- January-March 2024: Publish Notice of Proposed Rulemaking.
- March-June 2024: Public comment period. This will be an additional opportunity for the public to comment on the proposed fee schedules. Further information regarding how these comments or suggestions can be submitted will likely be available prior to the public comment period.
- Estimated October 2024: USPTO publishes Final Rule.
- November 2024: Anticipated effective date of fee changes.
For more information about trademark prosecution or the USPTO's proposed fee adjustments, please contact the authors or other members of Holland & Knight's Trademark Protection and Prosecution Team.
Information contained in this alert is for the general education and knowledge of our readers. It is not designed to be, and should not be used as, the sole source of information when analyzing and resolving a legal problem, and it should not be substituted for legal advice, which relies on a specific factual analysis. Moreover, the laws of each jurisdiction are different and are constantly changing. This information is not intended to create, and receipt of it does not constitute, an attorney-client relationship. If you have specific questions regarding a particular fact situation, we urge you to consult the authors of this publication, your Holland & Knight representative or other competent legal counsel.