Proposed USPTO trademark fee adjustments portend big changes for trademark applicants

On August 28, 2019, the United States Patent and Trademark Office (“USPTO”) released its preliminary trademark fee proposal for 2020.  The proposed fee adjustments include both marked increases to many existing fees as well as over 20 new fees.  These fee adjustments reflect the USPTO’s ongoing efforts to preserve and maintain the integrity of the Register by ensuring that applicants and registrants uphold their duty to limit the coverage of their applications and registrations to only include goods and services as to which they have a bona fide intent to use or actual use.  Other notable goals of the proposed fee adjustments include encouraging fewer post-registration filings, and recovering more costs of Trademark Trial and Appeal Board (“TTAB”) proceedings.

Notable Proposed Fees and Fee Increases

Previously, we have explained why the practice of filing overly broad descriptions of goods and services such as class headings (as is common practice in other jurisdictions), presents particular risks under U.S. law.  Specifically, we have emphasized the U.S. requirement that an applicant certify to having a bona fide intent to use the mark on every good and service listed in its application as of the filing date (for applications filed based on intent-to-use, under the Paris Convention, or based on the Madrid Protocol).  We have also highlighted the vulnerability of applications filed for overly broad descriptions of goods and services to fraud or lack of bona fide intent challenges, and the greater frequency that non-U.S. applicants face such challenges.

In addition, we have advised our clients of the USPTO’s trademark audit program which randomly selects 10% of all registration renewals filed in a given year for audit, requires chosen registrants to provide proof of use for two additional goods or services per each class, and implements partial cancellation where use cannot be demonstrated.  We have noticed an uptick in the number of renewal audits we have received over the past year.

These latest fee proposals represent yet another mechanism by which the USPTO can ensure the continued integrity of the Register.  Specifically, the USPTO’s fee proposal contemplates the imposition of a new $100 fee for each good or service deleted from a registration following a post-registration audit or as a result of an adverse finding in a TTAB case.  Such a “penalty” for failing to timely delete those goods and services no longer in use could result in the imposition of significant costs for registrants with lengthy and over-inclusive lists of goods or services. The USPTO undoubtedly hopes the potential threat of such penalties will encourage all registrants to evaluate and right-size their registration descriptions at the time of renewal, and on their own initiative.

Other notable proposed new fees and fee increases include the following:

• A new $100 fee for filing a letter of protest (which is becoming an increasingly common practice by trademark owners to address perceived failures in PTO searching and examination);
• A new $400 fee for filing a request for reconsideration prior to appeal;
• New and increased TTAB fees, such as:
  • A $200 fee increase per class for all new (electronic) appeals, oppositions or cancellations;
  • The imposition of a $500 fee to request an oral hearing in an appeal, opposition, or cancellation;
  • A new $500 fee to file a motion for summary judgment in an inter partes proceeding;
  • A new $400 fee to file a request for reconsideration of a final office action; and finally
  • A new fee of $400 for the filing of a request for suspension of an appeal and remand filed together with a request for reconsideration. 

Next Steps

While these fee adjustments proposed by the USPTO have not yet been implemented, and the PTO is still accepting public comments through March, the changes could come into effect in August 2020.  Our Hogan Lovells U.S. Trademark Team is well positioned to assist our clients in managing their portfolio through these new requirements.  For questions concerning these fees or for further information regarding best-practices for drafting and prosecuting U.S. applications, please contact Julia Anne Matheson.

Authored by: Julia Anne Matheson, David Brzozowski