IP Tech Knowledgy

The U.S. Patent and Trademark Office (USPTO) has increased a variety of filing fees and has revised a number of important aspects of the trademark application process. New applicants must pay closer attention to the details of application, and likely will have to pay more to the USPTO throughout the application, registration, and maintenance process.  

The significant procedural changes in the application process will require more time and higher fees. In an effort to streamline the review process, the USPTO is encouraging all applicants to use preset language found in its Trademark ID Manual to list the goods and services for which the mark is being applied for. An applicant can still use its own language to identify its goods and services, but would have to pay an additional $200 filing fee per Class if the application  includes language that is not from the ID Manual.  

An applicant might want to use its own language if the ID Manual does not capture the gist of the applicant’s goods and services. Or, an applicant can propose that new language be added to the ID Manual, so the application can comply with the new rules.  he PTO says the turnaround on implementing a new – acceptable -- listings will only be a few days. At times it may not be worth the expense and waiting time of submitting a suggestion, rather than paying the $200 per Class extra fee for using free-form language that is not in the ID manual. There also may be times where it is not efficient to wrestle with fitting the listing into the ID Manual to save the extra fee.

The USPTO is also encouraging applicants to be concise by charging a $200 fee per Class for every group of 1,000 characters (including punctuation and spaces) used in the ID of goods and services beyond the first 1,000 characters.

Applicants must now be more careful to include all relevant information in the original application or pay a $100 fee per Class if the application does not provide sufficient information. This applies to more common aspects of an application, such as the applicant’s name, addresses, corporate status, and dates of use, as well as less common information such as statements about translations, color on a drawing, and description of non-standard characters. The trick of not initially paying filing fees for all applied-for classes is no longer available, and now incurs the $100 per Class deficient filing fee.

Applicants should also be prepared for more denials of applications. The ID Manual uses language that is broader than applicants might otherwise use, meaning that more applications and registrations may be deemed overlapping, and an applicant using broader wording may be less able to differentiate its mark from prior registrations with broader wording.

The USPTO is also increasing other fees including for renewals, Statements of Use and Amendments to Allege Use, extensions to make filings, and various petitions.  

These changes are part of a refresh of the online application process. Applicants now access the online forms through the new Trademark Center.  This page provides links to the new application form, the previously-revamped search system of the USPTO’s trademark records, and a new feature of providing a docket of applicant’s — or an attorney’s — pending applications. The docket will only be populated with applications filed through the new system, and not previously-filed applications. Paper applications are no longer allowed.

Ned T. Himmelrich
410-576-4171 • nhimmelrich@gfrlaw.com