Substantial Increase In US Trademark Fees Will Ring In New Year 2021

McCarter & English, LLP

McCarter & English, LLP

If you are considering filing a new trademark application or maintaining an existing registration, you may want to file your submission before the end of 2020. The United States Patent and Trademark Office (USPTO) will increase its fees for trademark applications, post-registration maintenance filings, and certain filings with the Trademark Trial and Appeal Board (TTAB). The TTAB hears applicant appeals from examination decisions, as well as opposition and cancellation actions between interested parties.

Some of the fees are new, and many of the fee increases are substantial. For example, the USPTO has implemented a new $250 fee for deleting goods and services in some circumstances associated with Declarations of Use. Registrants are encouraged through a reduction of fees to amend their registrations before filing the Declaration of Use. Foreign registrants, who often register in the USPTO with lengthy lists of goods that are ultimately not sold in the USA, may be heavily impacted by these fees and may consider filing amendments well before the Declaration of Use is due.

Other fee increases include the following common submissions:

Application fees

  • Standard electronic submission: $350 per class

Increase from $275 per class

Post-registration maintenance fees

  • Section 8 or 71 Declarations of Use: $225 per class

Increase from $125 per class

  • New $250 fee for deleting goods, services, and/or classes from a registration after filing a Declaration of Use but before it is accepted

Petition to the Director and letter of protest fees

  • Petition to the Director: $250

Increase from $100

  • Petition to revive an abandoned application: $150

Increase from $100

  • New $50 fee for letter of protest per application

TTAB fees

  • Appeal from an adverse decision during prosecution: $225 per class

Increase from $200 per class

New $200 filing fee per class for appeal briefs

  • A tiered fee structure is in effect for requests for extension of time to file an opposition, with the cost of a 90-day extension at $200

Increase from $100 per application

  • Notice of opposition: $600 per class

Increase from $400 per class

  • Petition to cancel registration of another party: $600 per class

Increase from $400 per class

However, the USPTO is implementing partial refunds in many cases if the cancellation involves only a nonuse or abandonment claim, the defendant didn’t appear, and a default judgment is issued. This refund offer is an attempt to make it easier to clear the registry of unused marks.

Please note this is not a complete list of all the fees being changed, particularly for the TTAB. Further, these fees apply to electronic filings, which make up the bulk of filings because the USPTO has mostly gone paperless.

For a more in-depth review of the changes, please contact us or review a copy of the Final Rule, which is available here.

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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