Government Fees to Increase for US Trademarks

Effective January 2, 2021, the US Patent and Trademarks Office (“USPTO”) will be increasing a number of its fees for new US trademark applications, US trademark registration maintenance filings, and US cancellation and opposition proceedings, and other miscellaneous filings. These fee increases will increase the cost of US trademark matters for many businesses. Therefore, businesses would be wise to prioritize filing US trademarks applications, and certain other filings, before January 2, 2021. In this blogpost we highlight the most significant of these increases and who should prioritize filing before the fee increases take effect. Trademark Application Filing Fees Applicants for US trademark registration are able to file two types of applications online through the USPTO’s Trademark Electronic Application System (“TEAS”): so-called TEAS Plus and TEAS Standard applications. The goods and services covered by a TEAS Plus application must be selected from the USPTO’s index of pre-approved goods and services, the Trademark ID Manual. Currently, the filing fees for TEAS Plus applications are $225 USD for each class of goods or services. In comparison, a TEAS Standard application allows applicants to use custom language to describe the goods and services covered by their application, allowing for more flexibility as to the specific goods or services to be covered. Currently, the filing fees for TEAS Standard applications are $275 USD for each class of goods and services. As of January 2, 2021, these fees will be increasing to $250 USD per class for TEAS Plus applications and $350 per class for TEAS Standard applications. The disproportionate fee increases between TEAS Plus and TEAS Standard applications are intended to incentivize US trademark applicants to file TEAS Plus applications. But, in reality, many applicants require the increased flexibility of a TEAS Standard application to ensure that their trademark applications, and ultimately their trademark registrations, have an appropriate scope of protection. Given the fee increases for US trademark applications, certain businesses should strongly consider filing new applications before January 2, 2021. These businesses include Canadian businesses, who may already find US applications expensive due to the exchange rate between the US and Canadian dollar, and businesses whose trademarks will be used with goods and services in a wide variety of Nice Classes. Businesses offering new and innovative goods and services, or highly specific goods and services, should also consider filing US applications before January 2, 2021, since they likely require the flexibility of a TEAS Standard application. Miscellaneous Application and Registration-related Filings Fees for a number of miscellaneous US trademark application and registration-related filings will also be increasing on January 2, 2021. While it is outside the scope of this blogpost to canvass them all, the following increases are of particular note:

1. Petitions to the Director

The fee for filing a petition to the director of the USPTO will be increasing from $100 USD to $250 USD. Petitions to the director are flexible in nature and allow applicants to make certain, case-specific requests. For example, in order to amend the filing basis of an application after the application has been published for opposition, the applicant must file a petition to the director requesting the amendment.

2. Section 8 Declaration of Use

US trademark registrants must prove continued use of their registered trademarks in order to maintain their registrations. This is done by filing a Section 8 Declaration of Use between the fifth and sixth years after a trademark has been registered. This is an essential filing for all registered US trademark owners who wish to keep their registrations active. As of January 2, 2021, the fee for filing a Section 8 Declaration of Use will increase from $125 USD per class of goods and services to $225 USD per class. Businesses with existing US applications or registrations should consult their trademark agent to determine whether any of the other miscellaneous fee increases may apply in their respective circumstances. Cancellation and Opposition Proceedings US trademark cancellation and opposition proceedings are governed by the Trademarks Trial and Appeal Board (“TTAB”). The fees for commencing proceedings before TTAB and for filing various documents with the board will also be increasing on January 2, 2021. TTAB proceedings are complex quasi-judicial proceedings that can involve significant time and cost expenditures. Parties already involved in proceedings before TTAB, as well as parties considering instituting proceedings, should consult their trademark agent to determine how the increased TTAB fees may apply in their respective circumstances. Take-Aways Given the large number of USPTO fee increases coming into effect on January 2, 2021, the following should be kept in mind:

• Businesses wishing to file new US applications should prioritize filing before January 2, 2021, in order to save on application filing fees;
• Businesses with existing US applications and/or registrations may be required to pay increased fees in the future for certain matters relating to their applications and/or registrations, depending on the circumstances; and,
• Businesses involved in TTAB proceedings, or interested in commencing such proceedings, should be prepared to pay increased fees – including for commencing proceedings after January 2, 2021.

If you would like to file one or more new US applications before January 2, 2021, please do not hesitate to contact the Shift Law team.