Trademark Office Proposed Fee Changes Could Change Filing and Prosecution Strategies

The U.S. Trademark Office announced its intent to increase various filing fees, and assess new categories of fees, in response to its continually increasing operational expenses.  The last time the U.S. Trademark Office changed its fee schedule was January 2017.

Fortunately, the Office has also indicated that it will not implement its proposed fee changes until October 2020 at the earliest.  Even then, the notice suggests that it would weigh its operational needs against the state of the U.S. economy before moving forward with the fee adjustments.

Below is a summary of many of the highlights of the proposed filing fee changes for electronic filings (which the U.S. Trademark Office continues to encourage through lower filing fees compared to filing by paper):

Two new categories of fees are worth noting as they may significantly impact trademark portfolio management strategies.

New Fees Assessed for Delayed Requests for Reconsideration

For the first time, the Office is proposing to assess fees for submitting a Request for Reconsideration where such a request is filed more than three months from the issue date of a Final Action.  Under U.S. trademark practice, if the Office raises an objection, the applicant will have six months to respond to the initial Office Action.  If the Office does not feel the response adequately addressed the issues raised in the Office Action, it will then issue a Final Action.  The applicant then has six months to file a Request for Reconsideration in response to a Final Action to try to resolve these issues. No fees are currently due for such a filing, and the new proposed fees do not require a fee to file a Request to Reconsider unless the filing occurs after the first 3 months after issuance of the Final Action.  In short, the Office’s position is that later-filed Requests for Reconsideration increase the examination timeline and the agency’s costs. Accordingly, if these proposed fees are implemented, Requests filed three to six months after the Final Action issued would incur a $400 filing fee.  This will certainly influence applicants who would otherwise tend to wait until closer to the deadline to appeal before filing a Request for Reconsideration

New Fees Assessed for Deleting Items Post-Maintenance Filing

In addition, the Office proposes assessing a new $250/class fee for deleting goods, services, and/or classes from a registration after the registrant has filed its Affidavit of Continued Use (due six years after registration then every ten years from registration after that).  This is a significant move in light of the U.S. Trademark Office’s new(ish) audit program, which is triggered by the filing of Affidavits of Continued Use. Importantly, this newly proposed fee means it is more important than ever that trademark owners carefully review the claimed goods and services and ensure it is using the mark in connection with each and every good and service and can provide proof of such before filing its Affidavit of Continued Use. Not only will deleting goods and services from a registration in response to an audit jeopardize the validity of the entire registration under the audit program but under the proposed rules, filing fees for such deletions would be required.

Defaults Can Result in Refunds

The one bright spot in terms of possible cost savings for U.S. trademark owners, the proposed fee changes include the potential for receiving a refund of filing fees paid in connection with certain Petitions to Cancel.  In short, trademark owners who file a petition to cancel a registration may be entitled to a partial refund of the filing fee if the owner of the registration petitioned against never appears and the petition is successful based on the registrant’s default.

There is no set date for the proposed new fees to go into effect.  If you have been on the fence about filing new U.S. trademark applications, it may be worth considering submitting those applications sooner than later in light of the potential fee increases.  We will continue to monitor and update our readers as to the fee situation with the U.S. Trademark Office.