Today the USPTO published a Notice of Proposed Rulemaking for Trademark Fee Adjustment that sets or revises certain filing fees before the Trademark Office. This process follows up on the presentation made by the USPTO to the Trademark Public Advisory Committee on September 23, 2019. (Transcripts of the TPAC meeting and comments received in response are available at http://www.uspto.gov/about-us/performance-and-planning/fee-setting-and-adjusting.)
The fee changes proposed during the September 2019 TPAC Meeting at that time can be found at Table of Trademark Fee – Current, Proposed and Unit Cost – or one could review the USPTO’s Table of Trademark Fee Adjustments for a more detailed view of what would change under the earlier proposal. The USPTO Director’s letter to TPAC transmitting the earlier fee proposal can also be found on the USPTO’s Fee Setting and Adjusting page. When these amendments were proposed, the anticipated effective date was August 2020.
The latest NPRM seeking to revise the fees proposes that the earliest that new fees could go into effect would be October 2020, and specifically states that before the Final Rule is issued, “the USPTO will consider the state of the U.S. economy, the operational needs of the agency, and public comments submitted pursuant to this NPRM. The USPTO will make adjustments as necessary to the substance and timing of any final rule based on all of these considerations.” Trademark Fee Adjustment, 85 Fed. Reg. 37040 (proposed June 19, 2020).
Generally, the USPTO proposes to increase the fees for all application filing types – with higher fees assessed for paper filings. (Now that the USPTO mandates electronic filing throughout the application process, one would expect that the increase in paper filing fees would only apply in very limited circumstance and not actually result in a substantial change for most filers.)
Notably, the Proposed Rulemaking provides a multi-layer fee relating to amendments to the goods or services covered by a registration around the time the registrant is required to file its Section 8 (or 71) declaration of continued use of the mark in commerce to maintain the registration. Specifically, if the amendment is filed by a Section 7 amendment prior to the submission of the Section 8 (or 71) declaration, then there would be no filing fee to delete goods or services from the registration. There would also be no additional fee incurred if the registrant were to delete goods or services from its registration when it filed its Section (or 71) declaration at the outset.
However, if the registrant submits a Section 7 amendment request, responds to an Office Action or otherwise voluntarily amends the goods or services after the relevant Section 8 (or 71) declaration was filed, then the fee to make the change would be $250 per class (if filing electronically – if filing on paper, the fee increases to $350 per class). 85 Fed. Reg. 37040 at 37041-37042.
Clearly the Office is trying to persuade registrants to clean up their registrations in the normal course – and not wait until after they’ve signed a declaration that the mark is used in connection with all of the goods, and have thereafter received an audit request seeking proof, before realizing that they no longer actually use the mark in commerce in connection with certain goods or services, and therefore must delete them. It is this latter circumstance which would incur the sizable filing fee per class to delete goods or services from a registration during maintenance.
Interested parties have until August 3, 2020 to submit comments in response to the Notice.
More details can be found on the Federal Register’s summary page.