USPTO Fee Schedule: Trademark Fees Explained Pt. 2

Last week we discussed trademark fees at the USPTO. We focused our attention on application related fees, and fees associated with petitions and letters of protest. This week, we will consider post-registration, along with trial and appeal fees.

Post-Registration Fees

The category of fees identified as “Trademark post registration fees” lists several fees, a number of which repeat and/or rearrange. It helps to understand each of the following:

• §8 declaration

• §9 registration renewal application

• §12 affidavit

• §15 declaration

As the category suggests, the several filings above occur post-registration. That is, only registrants worry about these fees—not applicants. Registrants submit Section 8 declarations to prove that they are still using their marks. The submission includes the declaration, specimen (i.e., proof of use), and a fee. Registrants submit Section 9 applications to renew their registrations.

Section 12 affidavits are reserved for owners of trademarks registered under either the Act of March 3, 1881, or the Act of February 20, 1905. For reference, current federal trademark law (i.e., the Lanham Act) passed in 1946. As a result, Section 12 affidavits are not relevant to most registrations, today.

Section 15 declarations are known as declarations of incontestability. Section 15 declarations allow registrants to enhance their rights further. Certain grounds for challenging trademark registrations by way of cancellation are removed after incontestability. For example, after a registration becomes incontestable, third-parties can no longer cancel the registration on the ground that the third-party is a senior user of the same or similar mark, or that the registered mark is merely descriptive. By contrast, some grounds survive incontestability: a third-party is not prevented from asserting that the registered mark has become abandoned or that the registration was obtained by way of fraud. Section 15 declarations are not mandatory but generally recommended.

With these filings in mind, it is helpful to consider timing. Section 15 declarations are filed one time and usually at the time of the first Section 8 declaration (five years after registration). Section 8 declarations and Section 9 applications are mandatory and periodic if the owner wants to maintain the registration. Section 8 declarations are filed on a date that falls on or between the fifth and sixth anniversaries of the registration (or, for an extra fee of $100.00 per class, you may file within the six-month grace period following the sixth anniversary date). Additionally, Section 8 declarations and Section 9 applications are filed on a date that falls on or between the ninth and tenth anniversaries of the registration, and each successive ten-year period thereafter. To illustrate, Section 8 declarations could be filed at years 5, 10, 20, 30, 40, . . . . Section 9 applications would be filed at the same times except for year 5.

In the last paragraph, I mentioned that the submissions are filed between certain anniversaries of the registration (e.g., Section 8 declarations and Section 9 applications are filed on a date that falls on or between the ninth and tenth anniversary). If a registrant fails to timely submit, the USPTO will allow late submission (usually with six months) along with grace period fee (currently, $100 per mark per class per Section 8 and/or 9). Similarly, if there is a problem with a Section 8 declaration of Section 9 application, the USPTO will instruct the registrant to correct the deficiency, along a deficiency fee.

It may not be apparent on its face, but registrants and practitioners should be aware that the USPTO allows combined submissions (e.g., Combined §8 and §15 declarations, per class; Combined §8 declaration and §9 renewals, per class). At this time, the combined fee is the sum of the fees associated with each of the underlying submissions.

The remaining fees associated with this category arise from time to time and generally concern amendments to registrations (e.g., correcting errors in a registration certificate, amending the registrations, deleting goods and services).

Trademark Trial and Appeal Board (TTAB) Fees

The category of fees identified as “Trademark Trial and Appeal Board (TTAB) fees” concerns fees associated with matters before the USPTO’s Trademark Trial and Appeal Board. Discussion of this category is divided by ex parte appeals (i.e., appeals) ad inter partes trials (e.g., opposition and cancellation proceedings).

With respect to trials, a party challenging the application/registration pays a fee at the beginning of the proceeding (e.g., petition for cancellation, notice of opposition). Prior to filing a notice of opposition, the party opposing an application can request an extension of time to file a notice of opposition. Recall, the opposer has a thirty (30) day window to oppose an application. Requesting and obtaining an extension may afford the opposer more time to investigate its claim, pursue settlement, etc.

Applicants dissatisfied with a final office action may appeal the examiner’s decision to the TTAB. The applicant pays a fee at the outset. The applicant pays another fee in connection with its brief and more if the applicant wants an extension of time to file the brief.

Common to trials and appeals, a party desiring an oral hearing may request an oral hearing. The TTAB charges $500 for the oral hearing.

For additional information on these submissions, please feel free to contact me or consult the following page on the USPTO website.