With our Thanksgiving holiday approaching, The United States Patent and Trademark Office (USPTO) has just issued a much-anticipated final rule raising many of its fees for trademark matters effective January 2, 2021. To be fair, it has been several years since the last fee adjustment and Congressional impasses, government shutdowns, and pandemic economics have helped the agency learn that it needs to squirrel away a significant reserve fund so that it can continue to function even in hard times. But the USPTO is also fattening itself up to cover increasing technological and human resources expenses.
Many of these needs arose as a result of the USPTO’s decision in recent years to apply greater scrutiny when brand owners seek to maintain their U.S. trademark registrations through Declarations of Use that are required in the sixth year of a registration and with each 10-year renewal. The USPTO established a pilot program in 2012 to randomly audit the use evidence submitted in 500 registrations. Finding that owners of about half of the registrations improperly or inaccurately declared under oath that they were using their marks on all of the goods and services listed when they were not doing so, the USPTO established its program permanently in 2017 for 10% of registrations due for Declarations of Use, and has been increasing the proportion of registrations subject to the random audits. Now that the USPTO is scrutinizing registrations in greater numbers, it needs more people and resources to reduce the number and breadth of so-called “dead wood” registrations. Under the new rule, owners will be required not only to pay a higher fee to maintain their registrations, but also to pay additional government fees as a penalty if they do not proactively delete goods or services for which they cannot show that their marks are in use.
Of course, these are not the only changes coming in the beginning of 2021. The USPTO is establishing a new fee and procedural requirements for submitting a letter of protest against another party’s application. The USPTO is also planning to gobble up more by raising, among other fees, the filing fees for new applications, the fees associated with appeals of refused applications, the fees for obtaining extensions of the deadline to oppose a published application, and the fees for filing an opposition or cancellation. So, while many of us can’t wait for 2020 to end, those with needs for U.S. trademark services, including potential new trademark filers and owners of registrations due for maintenance may want to take advantage of the rest of this year while they can.
Some of the important fee changes include:
- Increase in the standard online trademark application fee from $275 to $350 per class;
- Increase in fees to seek an Extension of Time to Oppose from $100 to $200 for the initial 90-day request (or 60-day request following a 30-day request at no charge) and from $200 to $400 for a final 60-day request;
- Increase in fees to file a Notice of Opposition or Petition to Cancel from $400 to $600 per class;
- Increase in the Section 8/71 Declaration of Continued Use filing fee from $125 to $225 per class;
- New fee of $50 for filing a Letter of Protest against a third party application; and,
- 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) of $250 per class.
If you want to discuss any trademark applications or other filings, or if you have any questions, please contact us.
ABOUT MATTHEW ASBELL
Matthew Asbell assists clients in clearing, obtaining, enforcing, and defending trademark rights in the United States and throughout the world. He also provides advice on patents, copyrights, domain names, and other related areas. With prior background in the entertainment industry, information technology, and medicine, he is comfortable working with a wide range of clients in diverse industries. In addition, his certifications as a Social Media Strategist and software Master Instructor equip him to handle complex intellectual property matters arising in the Web 2.0 space.
ABOUT LAURA WINSTON
Laura J. Winston is a principal in the firm’s intellectual property group. Ms. Winston focuses her law practice primarily in the areas of trademarks, copyrights and the internet, representing a broad range of clients from individual business owners and small startup ventures to established Fortune 500 and publicly-traded companies both domestically and abroad. Ms. Winston practiced both at large firms and specialized intellectual property firms, before co-founding an intellectual property boutique firm. Her industry experience covers various industries as diverse as pharmaceuticals and medical devices, print and online publishing, computer-related goods and services, alternative energy, and travel and transportation.
ABOUT DAVID JOHNSON
ABOUT JONATHAN WACHS
Jonathan Wachs provides strategic counseling and operational advice to clients in the areas of intellectual property, commercial transactions, and outsourced legal departments. As head of the firm’s Intellectual Property Group, Mr. Wachs works closely with clients to develop, register, analyze, enforce, and transfer intellectual property assets in a customized, cost-efficient, and highly effective manner. Additionally, he conducts intellectual property audits through which clients learn the nature and value of their intellectual property assets and the steps needed to protect such assets from misappropriation or dilution. As a business lawyer, he has successfully negotiated and completed several multimillion-dollar business transactions and has served as general counsel to several small and midsize businesses and organizations in various industries and professions.
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