On May 27, 2016, the U.S. Patent and Trademark Office (USPTO) announced an adjustment to trademark fees that will take effect October 1, 2016 (the beginning of fiscal year 2017 for the U.S. Government). 81 Fed. Reg. 33619 (May 27, 2016). The good news for electronic filers using the USPTO’s TEAS and ESTTA filing systems, the fees are generally modest. In many cases, the electronic filing fees are not being increased at all. This includes the USPTO fees for filing new trademark applications using TEAS Plus or TEAS RF filing systems and electronic filing through TEAS for the following: extensions of time to file Statements of Use using, filing a Statement of Use, requests to divide, and Section 15 declarations and Section 9 renewals.
The one area that may prove a bit more challenging for regular filers is the change to a three-tiered fee structure for filing extensions of time to oppose. The first 30 days (no cause required) will remain USPTO fee-free if filed electronically. However, the second 60 days will need to be filed with cause and a $100 fee (if filed electronically, more if by paper). The last 60 day request for an extension will have a $200 fee (for electronic filers). This is in contrast to the current practice of requesting an initial 90 day extension of time to oppose with cause, but with no USPTO fee. And a filing for the last 60 day extension, usually upon stipulation of the parties, is currently filed without USPTO fees.
Here is a “30K” overview of the main fee changes for electronic filers:
For context, the USPTO held a public hearing about a proposed fee increase before the Trademark Public Advisory Committee (TPAC) on November 3, 2015. Based on written comments and comments provided at the TPAC hearing, the USPTO then revised the fee schedule from the one proposed last fall. For example, the currently announced trademark fee adjustment did away with the previously proposed increase for requests to divide and petitions to the director. However, a new fee of $75/class is being added to new applications using TEAS Regular (filing), which was previously not proposed last fall.But paper filers will be seeing very steep fee increases (for example, a new trademark application filed on paper will have a filing fee of $600/class up from $375/class). The reason for the steep increase is that it costs the USPTO a lot to handle paper filings. The USPTO is trying to better align fees with actual costs and improve overall efficiency. Even the steep new filing fee of $600/class for paper applications is below actual USPTO costs. The USPTO has published a chart of all the proposed trademark fees adjustments, comparing the current fees to the proposed fees, and identifying cost per filing for the past three years.
Comments on the announced trademark fee adjustment may be submitted to the USPTO (Attention: Jennifer Chicoski, Office of the Deputy Commissioner for Trademark Examination Policy, at TMFRNotices@uspto.gov) until July 11, 2016. Stay tuned for further updates, but expect a modest fee increase for electronic filers and a steep fee increase for paper filers on October 1, 2016.