The Director of the U.S. Patent and Trademark Office (USPTO) has notified the Trademark Public Advisory Committee (TPAC) of the USPTO's intent to restructure existing trademark fees and released its preliminary trademark fee proposal, along with fee-related materials. The proposed changes would make it more expensive for applicants to write their own descriptions of goods and services in ways not defined in the USPTO Trademark ID Manual. Additionally, proving use in commerce after an application will also become more costly, as will renewal and maintenance fees.
The decision to overhaul the existing trademark fee schedule comes after the USPTO's completion of a comprehensive trademark fee review. This review revealed two principal themes. First, forecasts for aggregate revenue using current demand estimates are lower than prior forecasts, which the USPTO believes is caused by lower-than-expected demand coinciding with recent trademark filing and renewal pattern changes. Second, overall USPTO operating costs have increased due to rising inflation in the U.S., resulting in the need to generate more revenue to finance the USPTO's operating shortfall.
New Single-Application Filing System and Related Surcharge Fees
The new fee proposal is timed to coincide with the transition to a new single-application filing system. The Trademark Electronic Application System (TEAS) Standard and TEAS Plus applications, along with their associated fees, will be discontinued and replaced with a single, basic application filing option with various premium surcharges. The newly proposed fee structure is:
Moreover, in an effort to align foreign and domestic application fee schedules, the USPTO has proposed adjustments to fees paid for foreign Madrid Protocol-based applications filed under Section 66(a) of the Trademark Act.
The USPTO expects that these collective surcharges will offset the higher operating costs incurred from excessively and unnecessarily long identifications and will also incentivize "complete applications," improving efficiency and reducing pendency times.
Other Fee Increases
Additionally, the USPTO has released proposals to increase or set the following trademark fees:
Though the fee increases may benefit the USPTO at large, this benefit comes at the expense of trademark owners and applicants. The new "insufficient information" penalty is particularly concerning; the USPTO has not clarified what constitutes "insufficient information" and whether each examining attorney will have unilateral authority to issue the penalty. Although these individual determinations may at some point be appealable to the Director (this has yet to be confirmed), such Petitions to the Director will cost a new and additional $400 fee. Applicants, already facing inconsistent examination refusals and delayed examination timelines, may now face another inconsistently applied standard, and its associated penalty, with their only recourse an uncertain appeal and payment of yet another fee.
Takeaways
These proposals are not final. However, they do mark the USPTO's intent to conduct an overhaul of its existing fee structures in an effort to generate additional revenue for the agency and to drive applicants to use standardized descriptions of goods and services. Trademark owners, industry groups and legal professionals should consider submitting comments and suggestions on the new trademark proposals, which can be directed to the USPTO according to the following timelines:
- June 5, 2023: TPAC Hybrid Public Hearing from 1 to 3 p.m. ET. To present oral testimony at the hybrid public hearing, a request must be submitted in writing to TMExec@uspto.gov by May 26, 2023.
- January-March 2024: Publish Notice of Proposed Rulemaking.
- March-June 2024: Public comment period. This will be an additional opportunity for the public to comment on the proposed fee schedules. Further information regarding how these comments or suggestions can be submitted will likely be available prior to the public comment period.
- Estimated October 2024: USPTO publishes Final Rule.
- November 2024: Anticipated effective date of fee changes.