On May 8, 2023, USPTO Director Kathi Vidal submitted to the Trademark Public Advisory Committee (“TPAC”) the USPTO’s proposed revisions to its trademark prosecution and TTAB fee tables.  The USPTO’s Fee Setting and Adjustment page has been updated to include Director Vidal’s Letter (“Letter”), the full Table of Proposed Fee Adjustments (“Fee Table”), Executive Summary, Background Information and a table comparing Current, Proposed and Unit Costs embedded in trademark fees (“Unit Costs”).  The proposed increases in these trademark fees resulted from the USPTO’s “comprehensive trademark fee review” and were deemed necessary “to increase aggregate revenue and refine certain fees to efficiently finance ongoing operations.” See Letter at 1.

Rulemaking Process

These proposed fees are not yet final.  Public comment is invited – through two methods: (1) requesting by May 26, 2023 the opportunity to testify before TPAC at its hybrid June 5, 2023 public meeting; or (2) submitting written comments using the Federal eRulemaking Portal (referencing Docket No. PTO–T–2023–0016) due on or before June 12, 2023. See Federal Register Notice, Apr. 27, 2023.  Keep in mind that all written comments submitted will be available to the public and viewable through the website.

The final trademark fee schedule would go into effect in November 2024, after the following anticipated milestones are met:  (from Executive Summary, Slide 27).

Notable Fee Increases and Other Updates for US Applications

There are a number of fee increases reflected in this proposal.  The rationale for these increases focuses on changes in recent application filing behaviors and demand for trademark registrations, as well as “higher-than-expected inflation and, in turn, increased aggregate costs relative to baseline estimates.” See Background Information, Slide 43; Executive Summary, Slide 6.  However, if and when the cause of these increases to aggregate costs (i.e., inflation) is addressed, it is unlikely the USPTO will propose to reduce these filing fees in response.

(Please note: this post focuses only on fees applicable to U.S. applications filed under Section 1(a) or 1(b) – and does not expressly cover Madrid Applications (Section 66) or WIPO designations into the U.S (Section 44), although many of these fee increases are replicated in those domains.)

A. Application Fee Changes:

A snippet of the proposed fee changes applicable to new applications is shown below.  (The blue color in the “Proposed Fee” column comes from the USPTO’s original document – but the row colors of yellow or white were added to distinguish between general application fees and ITU fees.)  To see all of the rows including fees which would remain unchanged, visit the full Fee Table.

• TEAS Plus and TEAS Standard applications are being abandoned (Letter at 2) – in favor of a single “basic application” for the higher $350 per class fee.  Executive Summary, Slides 9-13.
• Certain customizations to new applications are considered “premium . . . costly attributes” (see id.), supporting the proposal to charge higher filing fees, such as:
  • Submitting incomplete applications (Letter at 2 – presumably shown in the fee table as “insufficient information”) – which incurs a new $100 per class fee;
    • Nothing in the materials on the Fee Setting and Adjustment page explain what counts as “insufficient information” – although both Director Vidal’s Letter (at 2) and the Executive Summary (Slide 10) confirm that it does not cover “applications denied a filing date for failure to satisfy the requirements under 37 C.F.R. § 2.21.”
  • Applying for custom identifications of goods and services instead of relying on the standard IDs from the USPTO’s Acceptable Identification of Goods and Services Manual (“ID Manual”) – which incurs an extra $200 per class fee; and
  • When using custom IDs, using more than 1,000 characters to describe the goods and/or services to be covered by the application – which incurs an extra $200 per class fee for each additional 1,000 characters.  See Executive Summary, Slide 13.
    • NOTE – if an application uses custom IDs and includes more than 1,000 characters (but under 2000 characters) to describe the goods and services covered, the application filing fee would be $400 more per class than before these proposed fee changes.
    • The USPTO provides a detailed ID Manual “Guidance” page that might help applicants navigate starting to use the ID Manual instead.
    • If there are no standard IDs that cover the goods or services that an applicant wishes to use in a new application, the USPTO recommends submitting those proposed IDs to [email protected] – but note their additional explanation/guidance on submitting. The USPTO promises to respond within 1-2 business days, and if accepted, the new ID would appear in the next weekly update.
  • The USPTO will also be doubling the fee to request an extension of time to file a Statement of Use (SOU) beyond the first three extensions.  (In other words, the fourth and fifth extensions will cost $250 per class instead of the $125 per class fee for requests 1-3).  See Fee Table and Executive Summary, Slide 17.
  • The USPTO justifies this two-tiered pricing structure on the theory that applicants that enter their third year after a Notice of Allowance is issued without making use of their marks in commerce negatively impact newer-filed applications and the ability of newer applicants to clear marks for potential use or application.  See Executive Summary, Slide 15.

B. Maintenance Fee Changes

A screen shot showing the proposed fee changes in this category appears below (again, the blue column color was in the USPTO’s original chart):

• Each of the fees for basic maintenance filings is proposed to increase under this fee proposal – between $50 and $75 per class.

C. Miscellaneous Trademark Office Fees

A screen shot showing the proposed fee changes in this category appears below (again, yellow was added to the full table as a section break, but the blue column color was in the USPTO’s original chart):

• The most dramatic fee increase proposed is for Letters of Protest – which only a few years ago were free.  The fee increase for these filings is proposed to jump from $50 per filing to $250 per filing.  See Executive Summary, Slides 22-23.
• Petitions to the Director are used for several different non-standard proceedings, such as requesting that a domicile address be protected from disclosure on the USPTO’s public database, or the waiver of certain fees, expedited treatment of a new application to replace an inadvertently canceled registration, or the withdrawal of an unauthorized filing.  In this fee proposal, the USPTO seeks to increase the filing fee for such petitions by $150.
• The increase fee for filing one type of Petition to the Director – a petition to revive an application – is proposed to be slightly less expensive, at $100.

D.  TTAB Filing Fees Changes

• No changes to the current TTAB fees are proposed in this round.  See full Fee Table.

Accessing TPAC’s June 5 Public Hearing

TPAC’s June 5 public hearing is open to the public in person at the USPTO’s headquarters from 1:00pm ET through 3:00pm ET. (Meeting location is in the Federal Register Notice.)  It will also be livestreamed to the public and recordings of the hearing will be made available on the USPTO’s Fee Setting and Adjustment page “shortly after the meeting” (according to the Fed. Reg. Notice).  Typically, it takes about two weeks before video recordings of livestreamed events are uploaded to the USPTO’s site.

Conclusions

These changes – if made final – potentially dramatically increase the cost of trademark applications to trademark owners in several ways (among others):

1. The per class filing fee for every application filed with the USPTO will increase.
2. There are new “deficiency fees” assessed for correcting mistakes/conforming the applications to the USPTO’s new requirements.
3. Trademark owners will need to spend extra time (sometimes significant extra time) to convert their standard descriptions of their goods and services to conform to the previously-accepted descriptions of similar goods and services from the ID Manual.
   • In many cases (particularly for services), these preapproved IDs do not cover the specific goods or services offered by applicants under their marks, so additional time may be required to find standard IDs that might be “close enough” to provide adequate cover or to submit proposed customized IDs to the USPTO for approval before new applications are filed.
4. The longer it takes for trademark owners to prove use of their marks in U.S. commerce, the more expensive obtaining their registrations will become – not just because of the number of extension requests they file (all with a fee) but because the fourth and fifth requests will each cost them double the fees for previous extension requests.