For the first time in approximately three years, the United States Patent and Trademark Office (USPTO) has undertaken a detailed review and, generally, raising many of its fees for patents, trade marks and designs (or design patents as they are known in the US). The fee changes are the result of public consultation as well as consideration of various factors including the state of the US economy and the operational requirements of the USPTO.
Of particular interest to clients will be the various trade mark fees that will increase from 2 January 2021. This includes fee changes for trade mark applications and the relevant fees associated with Trademark Trial and Appeal Board (TTAB) matters. The TTAB is the authority responsible for dealing with trade mark oppositions and cancellation applications et al. Given the currency differential for Australian IP owners, the USPTO’s official fee increases can materially impact the cost of filing applications directly into the US in 2021.
Some of the Key Increases
US Trademark Filing Fees:
- Trademark Electronic Application System (TEAS) Standard fee will increase from US$275 to US$350 per class; and
- TEAS Plus fee from US$225 to US$250 per class
The TEAS Plus fee increase relates to applications that adopt a pre-approved description of goods and/or services from the US Trademark ID Manual. This is similar to IP Australia’s quick-pick goods and services list. A TEAS Standard application is where the applicant tailors the goods and/or services specification for an application to their specific requirements.
US Trademark Post Registration – Anniversary Fees:
- s8 or 71 declaration filed through the TEAS attesting to use of the registered mark increase from US$125 to US$225 per class (this is required as a trademark owner must demonstrate and attest to the use of the mark in the US for the relevant goods and/or services to maintain a registration after the 6th anniversary); and
- A new fee of US$250 for deleting goods and/or services from a registration after filing a s8 or 71 declaration (there is no fee if goods/services are deleted before filing the declaration – only the usual filing fee for a s8 or 71 declaration apply).
The USPTO has stated that it has implemented the new fee to “improve the integrity of the Register” for the purposes of clearance searches and accuracy of official records. Perhaps even more than usual, care must now be taken with respect to filing applications covering the specific goods and services of interest in the US and the steps taken at 5-6th anniversary whereby the above declaration attesting to use of a mark is required.
- A Notice of Opposition filed through ESTTA will increase from US$400 to US$600 per class;
- A Petition to Cancel a registration filed through ESTTA will also increase from US$400 to US$600 per class;
- Extensions of time will also increase variously depending on the time frame (with still no fee applicable for the first 30 days extension for filing a Notice of Opposition);
- Ex parte appeal filed through ESTTA will increase from US$200 to US$225 per class. There are also a number of new fees relating to ex parte matters); and
- A new fee of US$500 will apply to requests for oral hearings.
While the above sets out the primary fee increases of relevance to most applicants and opponents, the USPTO has amended (or introduced) a number of other fees including some of those relating to petitions to Director and letters of protest matters. If you are contemplating filing any direct applications in the US in the near future, it may be worth fast-tracking those applications to avoid the impending fee increases.
Fee increase for US designations – Madrid Protocol
On 30 November 2020, the International Bureau (IB) at WIPO has announced that the relevant official fees in respect of international trade mark applications (Madrid Protocol) will also be adjusted on 18 February 2021 with the official fees being amended as follows (in Swiss francs):
- Application or subsequent designation – CHF388 will increase to CHF460 per class; and
- Renewal of registration – CHF291 will be reduced to CHF276 per class (at the above date).
Window of Opportunity
Given the above IB fee amendments will not occur until 18 February 2021, clients can still avail themselves of the current US designation fees for international applications until 17 February 2021 (where the local US filing fees will increase on 2 January 2021). Conversely, there will be a slight saving for any renewal designating the US that can be delayed until 18 February 2021 or later.
If you require any further information or assistance, please contact one of our Intellectual Property team.
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