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Avoid being caught off guard by "surprise" fees.

Updated: Jan 5





I’ve been asked by trademark attorneys outside the U.S. why the USPTO charges so many fees after filing. I understand it can be frustrating to face a process with a seemingly endless variety of unpleasant surprises. To make the process a bit less confusing, I’ve put together a brief overview of the costs and causes of 5 of the most common fees applicants face after filing for registration with the USPTO.


Loss of TEAS Plus Status:


Cost = $125 per class


How does this happen?


For applications filed under Sections 1(a), 1(b), 44(d), and/or 44(e), the USPTO offers two online filing form options:


(1) TEAS Plus


OR


(2) TEAS Standard.


Although the initial filing fee is lower for TEAS Plus, there are more than a dozen ways to lose TEAS Plus status. If TEAS Plus status is lost, the applicant must pay a fee of $125 for the application to move forward. Some of the most common reasons for losing TEAS Plus status are:


· Failure to provide a translation of non-English wording in the mark

· Failure to provide a consent statement and/or written consent if wording or a portrait in the mark could reasonably be perceived as the name or portrait of a living person

· Omission of the applicant’s legal entity/citizenship

· Failure to complete fill-in-the-blank elements in the identification of goods or services or insertion of clearly inappropriate or unrelated goods or services


Filing Fee: Statement of Use or Amendment to Allege Use:


Cost = $100 per class


How does this happen?


Before an application filed under Section 1(b) can proceed to registration, you will have to submit an acceptable specimen of use. You have two options for submitting your specimen:


(1) Amendment to Allege Use


OR


(2) Statement of Use


Timing will determine your choice.


If you submit your specimen after filing the application but before the examining attorney approves the mark for publication, you will submit an Amendment to Allege Use.


If you submit your specimen after the examining attorney approves the mark for publication and issues a Notice of Allowance (NOA), you will submit a Statement of Use.


You might also encounter this fee even if you did not originally file under Section 1(b) but later amended to it. For example, if you filed under Section 1(a), but your application was refused because of the specimen and no specimen could be found to meet the examining attorney’s requirements, you might amend your application to Section 1(b) and submit the new specimen later when it is available. In that case, you would have to pay the $100 per class fee at the time you submitted the new specimen.


Filing Fee: Request for Extension of Time to File Statement of Use


Cost = $125 per class


How does this happen?


If you do not have an acceptable specimen ready when the deadline to file the Statement of Use arises, you may file a Request for an Extension of Time to File Statement of Use. You are literally buying extra time (6 months) to file the Statement of Use and are avoiding abandonment of the application in the meantime.


Filing Fee: Request to Divide


Cost = $100 per new application IF the request is to divide out (an) entire class(es)


How does this happen?


The most common reason for filing a Request to Divide is receipt of a partial refusal. For example, you might file an application for goods in two classes and receive a Section 2(d) likelihood of confusion refusal limited to only one of those classes (the examining attorney believes the goods in that class are related to the registrant’s goods, but the goods in your other class are not). If you argue against the refusal, this will delay registration of the mark with respect to the other class unchallenged by the examining attorney. If you file a Request to Divide, and if all other issues can be resolved, the application for the unchallenged class can proceed to approval and registration while you are arguing against the refusal with respect to the challenged class. This is particularly helpful if you plan to appeal the decision to the Trademark Trial and Appeal Board as it can take a long time between issuance of first refusal and receipt of the Board’s decision.


Beware: Fee calculation becomes more complicated if you are dividing out certain goods or services within a class instead of a class in its entirety. For example, if you applied for sunglasses and GPS navigation devices in Class 9 and received a refusal as to sunglasses but not GPS navigation devices, then you might file a Request to Divide sunglasses into one application and GPS navigation devices into a separate application. In that instance, you would pay not only the $100 fee per new application, but also a filing fee ($225 or $275 depending on whether you filed TEAS Plus or TEAS Standard) for the new application (so, $325 or $375 in total). This becomes trickier and more expensive in multi-class applications divided within multiple classes.



Fee to add a class:


Cost = $225 OR $275 per newly added class (depending on whether you filed TEAS Plus or TEAS Standard)


How does this happen?


If your identification of goods or services is overly broad and could be classified in more than one class (for example “ladders”), you will have to amend the identification to clarify exactly what the goods or services are. You might clarify your goods or services and remain in the same class(es) you entered in the original application. But you might clarify your goods or services and find that some of them belong in a different class from the one(s) you identified in the original application. If you paid at the time of filing for fewer classes than you end up identifying goods or services in after amendment, you’ll be charged a fee for the additional class(es). As a quick example, if you identify “ladders” in Class 6 and pay a filing fee for one class, you will have to specify what the ladders are made of. If your mark is used with both metal ladders (Class 6) and wooden ladders (Class 20), you will have to amend your application to:


(1) Include metal ladders only


OR


(2) Include wooden ladders only and re-classify to Class 20


OR


(3) include both metal and wooden ladders, add Class 20, and pay the fee to add the new class.


NOTE: The fee to add a class does NOT apply to applications filed under Section 66(a), or "Madrid" applications, because Madrid applications cannot be amended to add a new class.



Additionally, be aware that an applicant can also run into the costs of filing an appeal of a final refusal or defending against an opposition.

The USPTO has announced that it will increase certain trademark filing fees effective January 2, 2021. The fees described above are the current fees as of November 2020. Additionally, all costs assume online filings.


This information was posted on November 26, 2020 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.

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