PTO Gives Thanks for… Increasing Trademark Fees in 2021

Effective January 2, 2021, the U.S. Patent and Trademark Office (PTO) will be adjusting – or introducing – a number of Trademark and Trademark Trial and Appeal Board (TTAB) fees. This increase has been a long time coming: the fee review process began in December 2018. In its summary of the final rule, the PTO says that it took into account the current state of the economy when considering the fee increases and weighed that factor against the operational needs of the agency and comments received during the review process.

On balance, the increases are relatively modest; however, some of the new fees, including those relating to TTAB proceedings and Petitions to the Director, may take trademark owners by surprise. We summarize the more noteworthy changes below:

New Applications

The fee for TEAS Standard applications is increasing from $275 to $350 per Class; in contrast, the filing fee for TEAS Plus applications is also increasing – but only by $25 (from $225 to $250 per Class), perhaps helping to incentivize applicants to tailor their submissions to the more stringent TEAS Plus requirements.

Post-Registration

The fee for filing a Section 8 or 71 declaration is increasing from $125 to $225 per Class.

The PTO is also adding a new fee for deleting goods, services, and/or Classes from a registration after submitting a Section 8 or 71 declaration, but before the declaration is accepted – amendments of this nature will now incur a $250 per Class fee. This fee is likely to come into play when the PTO conducts an audit of a registration and finds that not all of the goods/services are offered under a mark, and should serve as a further incentive to ensure accuracy in these filings.

In contrast, the PTO has not implemented any fees for deleting goods, services, and/or Classes from a registration before filing a Section 8 or 71 declaration, or for submitting a Section 8 or 71 declaration that specifies only certain goods, services, and/or Classes in the registration.

Petitions to the Director/Letter of Protest

The fee for filing a Petition to the Director is increasing from $100 to $250 and the fee for filing a petition to revive an abandoned application is increasing from $100 to $150.

The PTO is also implementing a new fee for filing a Letter of Protest, which used to be free of charge. Filing a Letter of Protest through TEAS will now incur a $50 fee.

The final rule also codifies the procedures for filing Letters of Protest, which will also be effective as of January 2, 2021.

TTAB Fees

Similarly, the PTO will be increasing a number of fees relating to TTAB actions. The fee for filing either a Petition to Cancel or a Notice of Opposition will increase from $400 to $600 per Class. Extension requests beyond the initial 30 days (which are still free) have doubled: the fee for requesting an initial 90-day extension will increase from $100 to $200 and the fee for requesting a final 60-day extension will increase from $200 to $400.

Additionally, a few new fees will be implemented relating to ex parte and inter partes matters: the TTAB will now charge a $100 fee for second and subsequent requests for an extension of time to file an appeal brief in an ex parte appeal, a new $200 fee for filing the appeal brief itself, and a new $500 fee for requesting an oral hearing.

Please contact us if you have any questions as to how this new fee structure will impact your 2021 trademark budget.

This article appeared in the November 2020 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.