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What the USPTO’s 2021 fee hike for trademark applications and registrations means for you

Updated: Jan 5




The USPTO recently announced that, effective January 2, 2021, it will increase certain trademark application-related fees. It will also introduce some new fees for things that used to be free. Here’s a summary of 5 key changes and how they may impact you.



1. It will cost more to file a trademark application – especially if you choose the TEAS Standard form over TEAS Plus.


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


(a) TEAS Plus


OR


(b) TEAS Standard.


The fees are increasing for both, but the jump is significantly higher for TEAS Standard applications. Filing TEAS Plus will increase from $225 to $250 per class. Filing TEAS Standard will increase from $275 to $350 per class. Why would the USPTO increase TEAS Standard filing fees by three times as much as TEAS Plus filing fees? Because it really wants applicants to choose TEAS Plus. Unfortunately, this will hit harder those applicants on the cutting edge of innovation who have to use the TEAS Standard form just to accurately describe their goods or services.



2. If you don’t aggressively review the goods or services in your registration before filing maintenance and renewal documents, you may be punished by a new fee.


The USPTO is on a mission to clean up its register. On the front-end, this takes the form of a crackdown on fake specimens. On the back-end, it takes the form of auditing registrations. Typically, when you file declarations of use under Section 8 or 71 to maintain your registration, you need only submit 1 specimen per class. However, if your registration is audited, you may have to submit specimens for all of your goods and/or services. If you can’t, then the goods/services for which you don’t have specimens will be removed from the registration. This is serious business: Since 2012, the USPTO has removed goods/services from more than half of the audited registrations.


Up until now, the applicant faced with such an audit could (voluntarily and with no penalty) delete the goods/services for which they had no specimens. As of January 2, 2021, the stakes will be higher. The UPSTO is implementing a new fee of $250 per class for the deletion of goods/services from a registration after filing a Section 8 or 71 declaration, but before the declaration is accepted. This means that if you file a Section 8 or 71 declaration without seriously revising the goods/services based on actual use, hope to slide by with 1 specimen per class, and get called out in an audit, you’ll not only have to delete those goods/services for which you don’t have specimens but also pay $250 per class for the privilege of deleting them and keeping your registration alive.


There are two ways around this problem: Figure out ahead of time which goods/services you can’t prove use for, and:


(a) file a Section 7 request to delete those goods/services before filing your Section 8 or 71 declaration


OR


(b) delete those goods/services within the Section 8 or 71 declaration at the time of filing.



3. It will cost more to maintain a trademark registration.


Even if you aren’t hit with the new $250 per-class fee for deletions, you’ll still have to pay more to keep your registrations alive. Electronic filing fees for Section 8 or 71 declarations will increase from $125 to $225 per class.



4. Filing a Letter of Protest will no longer be free.


While an application is pending, a third party may submit a Letter of Protest arguing that the mark in the application should not be allowed to register. This is much more informal than filing an opposition and is allowed at a different phase in the process. Most commonly, these letters would argue that:


(a) the applied-for mark is generic/descriptive


OR


(b) there is a likelihood of confusion between the applied-for mark and a mark in a federal registration or prior-pending application.


Letters of Protest can currently be filed at no cost. As of January 2, 2021, there will be a $50 fee for filing a Letter of Protest.



5. The penalty fee for losing TEAS Plus status is actually going down slightly.


Looking for a silver lining? One small spot of good news is that if you are hit with a penalty fee for losing TEAS Plus status, that will sting slightly less than before.


Although the initial filing fee is lower for TEAS Plus than for TEAS Standard, 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 per class for the application to move forward. As of January 2, 2021, that fee will be reduced to $100 per class.


Some of the most common means of 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


Here’s a quick chart to keep the numbers straight:



All fees are in USD and assume electronic filing. "Current fees" are current as of the post date: December 1, 2020.


This information was posted on December 1, 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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