USPTO Is Raising Trademark Governmental Fees Effective January 2, 2021 Sherman IP Will Reduce It’s Attorney Fees For All Trademark Filings Paid Before December 31, 2020 To Allow Clients To Acclimate to the New PTO Filing Fees

The United States Trademark Office has announced that it is increasing fees effective January 2, 2021.

Sherman IP will absorb the fee increases for its clients through December 31st, regardless of whether filings need to be completed after the New Year in the hopes that it will allow clients to maintain a consistent budget for filings into the New Year.   In this program, the total paid by clients will remain constant through year end.   However, any invoices that remain unpaid on January 1 will become invalid and clients will be required to meet the new governmental fee schedule.

For example, Sherman IP currently charges a new application to a client at $875.00, including one class of goods or services.  This includes $600.00 in attorney’s fees and $275.00 in governmental filing fees.  On January 2, 2021, the governmental fee will increase to $350.00 per class. Sherman IP clients should expect their total cost for a new trademark application to increase.  For all new applications ordered by our clients on or before December 31, 2020, Sherman IP will absorb the increase to allow the total client cost to remain the same.

This Sherman IP discount will apply across the board to all trademark filings ordered and paid for prior to year’s end.  The Sherman IP invoice must be paid on or before December 31, 2020, for this discount to be effective.   Thereafter, clients should anticipate an increase in trademark costs.

  1. Basis for PTO Trademark Fee Increase – More Unrepresented Applicants and More Unauthorized, Fake Filing Services.

A USPTO multi-year fee review process concluded that increased fees are necessary to both “recover the aggregate costs of maintaining the USPTO’s trademark-related operations,” as well as “enhance the quality of trademark examination, achieve optimal examination times, invest in modernizing trademark information technology systems and infrastructure, and provide stability to USPTO operations, even in times of financial fluctuations.”

This is the first USPTO increase in trademark governmental filing fees in nearly three years. This increase is largely due to an increase in self-filed applications and applicants using cheap platforms that are not licensed trademark attorneys.  These poor applications and filings now require the trademark office to bolster its review efforts to maintain its standards for registration and maintenance.  Ultimately, the USPTO determined that the current fee schedule was insufficient to satisfy its anticipated surge in budgetary requirements.

As detailed in the Final Rule addressing the Trademark Fee Adjustment:

“Budgetary requirements increased to address unplanned pay raises, additional review of filings for potential fraud, post-registration audits, agency administrative operations, and continued investments in IT that required additional funding beginning in FY 2020.” 

A dramatic increase in trademark submissions from China has underscored the USPTO’s need for substantive and procedural policy changes. Between 2014 and 2018, the number of trademark filings from China skyrocketed exponentially, from approximately 5,161 applications in fiscal year 2014 to approximately 54,064 in fiscal year 2018.  Much of this increase can reasonably be attributed to the Chinese government subsidizing its citizens and businesses with cash incentives for U.S. trademark registrations.

The Commissioner for Trademarks highlighted that many applications are now being filed without proper materials and disregarding important U.S. rules and requirements.  Filings are being made so poorly that they may be considered fraudulent or invalid.  Oftentimes, applicants are filing these applications themselves, or through individuals who are not authorized, licensed U.S. trademark attorneys.  Additional resources need to be allocated to reject these improper applications.

At Sherman IP, we are often hired to fix these applications.  We see these types of improper filings all the time.  Sometimes they cannot be fixed, and rights must be abandoned.   Sherman IP attorneys are specialists in fixing and filing trademark applications.  We are NOT an unlicensed filing service.  We are licensed attorneys in the United States, our team all reside in the United States, and we do not outsource our work overseas like many popular filing services.

These emerging threats to the integrity of the Trademark System were addressed in a recent statement before the United States House Subcommittee on Courts, Intellectual Property, and the Internet:

  “The USPTO increasingly has been receiving trademark application and registration maintenance filings involving false or inaccurate use claims and submission of fake or digitally altered specimens that do not actually show use of the mark in U.S. commerce in the ordinary course of trade as required by law. Many of these applicants appear to be filing these questionable applications on the advice, or with the assistance of, foreign individuals and entities who are not authorized to practice law in the U.S. and therefore should not be representing trademark applicants before the USPTO.” 

The recent corrosion of the integrity of the U.S. Trademark System has precipitated sweeping policy changes directed at detecting and preventing these improper, and often fraudulent submissions, such as revised specimen examination guidelines, codified procedures for third parties to protest improper evidence, creation of a special task force to combat illicit activities, and a requirement that foreign applicants be represented by licensed attorneys in the United States to mitigate the scourge of fake practitioners evading USPTO sanctions.

Partly because the USPTO lacks Congressional authority to impose fines on fraudulent filers, the financial burden of implementing such integrity-saving measures is absorbed by fee increases. To that end, here is a list of some of the main changes to the trademark fee structure which take effect January 2, 2021:

Prosecution-related fees

  • TEAS Standard: $350 per class
    Up from $275 per class
  • TEAS Plus: $250 per class
    Up from $225 per class
  • Petition to the Director filed through TEAS: $250
    Up from $100 
  • Petition to revive an abandoned application filed through TEAS: $150
    Up from $100 
  • New fee for letter of protest: $50 per application

Maintenance-related fees

  • Section 8 or 71 declaration filed through TEAS: $225 per class
    Up from $125 per class 
  • New fee for deleting goods, services, and/or classes from a registration after submitting a section 8 or 71 declaration, but before the declaration is accepted: $250 per class if filed through TEAS

TTAB-related fees 

  • Petition to cancel filed through ESTTA: $600 per class
    Up from $400 per class
  • Notice of opposition filed through ESTTA: $600 per class
    Up from $400 per class
  • Ex parte appeal filed through ESTTA: $225 per class
    Up from $200 per class

See the Final Rule for a full list of fee adjustments and changes.

We recommend that clients consider filing their trademark matters now to avoid the fee increases and that any foreign applicants contact us to make sure that their applications are represented appropriately.  Sherman IP attorneys are specialists in representing clients before the United States Trademark Office.