USPTO Publishes Final Rule Codifying Significant Trademark Fee Increases

The U.S. Patent and Trademark Office on Tuesday published a Final Rule setting new fees for trademark filings and Trademark Trial and Appeal Board (TTAB) proceedings, which will be effective January 2, 2021. The last time trademark fees were adjusted was about three years ago.

The increases range from modest to fairly substantial. To file an application using the TEAS Plus option, the fee has increased from $225 per class to $250 per class, and the processing fee for failing to meet the TEAS Plus requirements has been reduced from $125 per class to $100 per class. However, the fee for TEAS Standard per class has jumped $75, from $275 to $350, which many trademark owners who commented found unreasonable.

A petition to cancel or oppose a trademark at the TTAB will now be $600 per class, up from $400 per class, a hike characterized by the Intellectual Property Owners Association (IPO) as “quite steep”.

Brand new fees include:

• 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: $250 per class if filed through TEAS
• New fee for letter of protest: $50 per application
• New fee for second, and subsequent, requests for an extension of time to file an appeal brief in an ex parte appeal filed through ESTTA: $100 per application
• New fee for appeal briefs in an ex parte appeal filed through ESTTA: $200 per class
• New fee for requests for oral hearings: $500 per proceeding

In a press release, the Office said the fee review process began in December 2018 as part of its standard biennial review of fees, costs and revenues. That review determined that fee increases were necessary to “address increasing costs and to provide necessary resources for Trademark operations, including implementing the USPTO 2018-2022 Strategic Plan.”

Following a 2019 Federal Register Notice and subsequent Public Comment period, the Trademark Public Advisory Committee (TPAC) published a report noting that its 2018 Annual Report stated, “In FY 2018, the USPTO considered its 5-year financial outlook and determined that additional fee adjustments are not warranted at this time,” leading some commenters to wonder what changed.

The Office explained in a presentation given during the TPAC public hearing that “projected increases in filings and the costs necessary to support trademark operations, continued and promised investments in IT systems, IP Policy and USPTO programs are expected to exceed available revenues and operating reserve minimum balances by FY 2021.”

Reasons for these changing circumstances included “pay raises not included in budget formulation requirements, as well as necessary spending on IT stabilization and modernization efforts,” said the report.

The Office took many of the recommendations made in the TPAC Report, and then further considered comments made in response to their June Notice of Proposed Rulemaking. As part of that comment period, the International Trademark Association (INTA) objected to the $75 increase for standard TEAS filings and said that the increases to petition, post registration and TTAB fees were “dramatic” and will pose hardship for some trademark owners. INTA also strongly objected to the new $500 fee for oral hearing requests, which remained in the final rule, and to a proposed increase to Request for Reconsideration fees, which was withdrawn.

In addition to fee changes, the Office also codified the procedures for letters of protest, which allow third parties to bring to the attention of the USPTO evidence bearing on the registrability of a mark. These letters have become especially significant due to an increase in fraudulent trademark filings from China in recent years.

New requirements for letters of protest include:

• Provide an itemized evidence index.
• Submit no more than 10 items of evidence or 75 total pages, absent special circumstances.
• Pay a $50 fee per letter of protest. The fee will help us to recover a portion of our processing costs without placing an undue burden on third-party filers.

“These requirements encourage the filing of timely, relevant, and well-supported letters of protest, which ultimately strengthen the integrity of the register,” said the Office in its summary of the Final Rule.

The USPTO also published a Final Rule in the Federal Register in August announcing FY2020 patent fee adjustments for patent filings and America Invents Act trials. Those adjustments became effective October 2, 2020 and included increases to requests for expedited design patent examinations ($700 increase for large entities), utility and reissue patent issue fees ($200 increase for large entities) and requests for inter partes review (IPR) challenges at the Patent Trial and Appeal Board ($3,500 increase for large entities). 

A full listing of all trademark fee changes is available in the Final Rule.

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