On January 2, 2021, the U.S. Patent and Trademark Office (Trademark Office) will introduce the modified and new trademark fees summarized below.

All application fees will rise, as well as the cost to appeal a refusal or to oppose or cancel an application or registration. But the primary new fee requiring attention is the initiation of a fee to delete goods after the post-registration declaration-of-use submission (often called the Section 8 or 71 declaration).

After registering a trademark, the owner must prove continued use of the mark five years, ten years and every ten years thereafter to maintain registration. The Trademark Office’s rules require the owner to demonstrate use for only one item per Class of goods or services in the registration, though there may be many other items listed within the same Class. If the mark is not used for some of the goods or services, those goods and services, with some limited exceptions, should be removed from the registration. Over the last several years, the Trademark Office has audited some renewal filings and requested the owner to show examples of use for more items in the Class, all without imposing any fee. Starting in the new year, if the renewal is audited and the owner cannot show use for these additional items, the owner will receive a penalty charge for removing these items from the registration — $250 per Class. Therefore, it is more important than ever when filing a renewal that clients confirm use for all listed goods and services in the registration, particularly for registrations with long lists of goods and services. In addition to the Trademark Office costs, the process of responding to the Trademark Office will incur additional legal fees.

An overview of the Trademark Office fee changes can be found here.