United States Patent and Trademark Office OG Notices: 15 February 2005
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 2
Docket No. 2004-T-051
RIN 0651-AB83
Changes in Fees for Filing Applications for
Trademark Registration
AGENCY: United States Patent and Trademark Office, Commerce
ACTIONS: Final rule
SUMMARY: The United States Patent and Trademark Office (Office) is
amending its rules of practice to adjust the fee for filing a trademark
application for registration based on whether the application is filed on
paper or electronically using the Trademark Electronic Application System
(TEAS). Specifically, the Office is amending its rules to provide that:
(1) the fee for a trademark application filed on paper shall be increased
to $375.00 for each class of goods or services; and (2) the fee for a
trademark application filed through TEAS shall be decreased to $325.00 for
each class of goods or services.
EFFECTIVE DATE: January 31, 2005.
FOR FURTHER INFORMATION CONTACT: Cheryl Black, Office of the Deputy
Commissioner for Trademark Examination Policy, by telephone at
(571) 272-9565, or by e-mail to cheryl.black@uspto.gov.
SUPPLEMENTARY INFORMATION
The Office is amending the trademark rules of practice governing the
payment of fees for trademark applications to require payment based on
whether the application is filed on paper or electronically through TEAS.
Specifically, the Office is amending its rules to provide that: (1) the
fee for a trademark application filed on paper shall be increased to
$375.00 for each class of goods or services; and (2) the fee for a
trademark application filed through TEAS shall be decreased to $325.00
for each class of goods or services.
Background
The Consolidated Appropriations Act 2005, Pub. L. 108-447,
(Appropriations Act) was enacted on December 8, 2004. The Appropriations
Act amends the Trademark Act of 1946 to require that:
[d]uring fiscal years 2005 and 2006, under such conditions as may be
prescribed by the Director, the fee under Sec. 31(a) of the Trademark
Act . . . for (1) the filing of a paper application for trademark
registration shall be $375; (2) the filing of an electronic application
shall be $325; and (3) the filing of an electronic application meeting
additional requirements prescribed by the Director shall be $275.
This final rule adjusts the trademark application filing fees for
applications filed pursuant to Sec. 1 or 44 of the Trademark Act on paper
to $375.00 per class and applications filed pursuant to Sec. 1 or 44 of
the Trademark Act through TEAS to $325.00 per class in accordance with the
provisions of 15 U.S.C. 1113(a), as amended by the Appropriations Act.
The purpose of the lower fee for TEAS applications is to encourage
applicants to file trademark applications electronically and to respond to
any outstanding issues electronically. The Director will not prescribe
rules for electronic applications that qualify for a filing fee of $275.00
until the Office deploys the information technology systems necessary to
process these applications. Electronic applications in this third
category will have additional filing date requirements.
The filing fee for Madrid Protocol applications under Sec. 66(a) of
the Trademark Act (66(a) applications) will remain unchanged. The Office
will amend the filing fee for 66(a) applications in accordance with the
requirements and procedures set forth in the Rule 35 of the Common
Regulations Under the Madrid Agreement Concerning the International
Registration of Marks and the Protocol Relating to That Agreement (Common
Regs.) (April 1, 2004) and issue a notice of the effective date of the
change. The rule change in Sec. 2.6 is waived as to 66(a) applications
until the procedures required by the Common Regs. are completed.
References below to "the Act," "the Trademark Act," or "the statute"
refer to the Trademark Act of 1946, 15 U.S.C. 1051, et seq., as amended.
Discussion of Specific Rules
The Office is amending rules 2.6, 2.86 and 2.87.
The Office is revising Sec. 2.6(a)(1) to provide that the fee for filing
an application on paper is $375.00 per class, and that the fee for filing
an application through TEAS is $325.00 per class.
The Office is amending Sec. 2.86(a)(2) to provide that the filing fees
for a multiple class application are based on Sec. 2.6, which lays out a
two-track fee system based on whether payment is made on paper or through
TEAS. For example, if the applicant files a single class application
through TEAS, the applicant must pay the TEAS application filing fee for
the class identified in the application. If, on examination, the Office
determines that it is a multiple class application, the applicant may
respond through TEAS and pay the TEAS application filing fee for each
additional class. Alternatively, the applicant may respond by mail or
fax and pay the paper application filing fee for each additional class.
The Office is revising Sec. 2.87(b) to provide that where a new
separate application is created from a request to divide out some, but not
all, of the goods or services in a class, the applicant must pay the fee
for dividing the application and the applicable application filing fee as
set forth in Sec. 2.6(a)(1). Currently division requests can only be
filed on paper, so the applicable filing fee will be $375.00 per class.
However, in the future it will be possible to file a request to divide
through TEAS, and at that point, if the request to divide is filed through
TEAS, the TEAS application filing fee will apply.
Rule Making Requirements
Administrative Procedure Act: The final rule changes certain fees for
filing trademark applications in order to conform to the trademark fees
specified in 15 U.S.C. 1113(a) as amended by the Appropriations Act.
Because these changes merely implement the fees set forth in the
Appropriations Act, these rule changes involve interpretive rules and/or
rules of agency practice and procedure under 5 U.S.C. 553(b)(A). See
Bachow Communications Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001);
Paralyzed Veterans of America v. West 138 F.3d 1434, 1436 (Fed. Cir.
1998); and Komjathy v. National Transportation Safety Board, 832 F.2d
1294, 1296-97 (D.C. Cir. 1987). Therefore, this final rule may be
adopted without prior notice and opportunity for public comment under
5 U.S.C. 553(b) and (c), or thirty-day advance publication under 5
U.S.C. 553(d).
This final rule may also be adopted without thirty-day advance
publication of the fee changes pursuant to 15 U.S.C. 1113(a). While
nothing in the Appropriations Act or any other law requires delayed
implementation of the fee changes in order to implement these fee changes,
the Office must reprogram the trademark electronic filing system to
accept the reduced fee. If TEAS is not reprogrammed before the fee
changes go into effect, the Office will have to issue refunds to thousands
of applicants for the amount paid in excess of the lower application filing
fee. Such a corrective measure would be an administrative burden to the
Office and to the public. Therefore, the Director has decided to briefly
delay the implementation of the fee changes to allow the Office sufficient
time to make the necessary programming changes. This final rule will go
into effect on January 31, 2005.
Regulatory Flexibility Act: As prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553 (or any other
law), neither a regulatory flexibility analysis nor a certification are
required under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.).
See 5 U.S.C. 603.
Executive Order 13132: This rule making does not contain policies with
federalism implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866: This rule making has been determined not to be
significant for purposes of Executive Order 12866.
Paperwork Reduction Act: This rule making involves information
collection requirements which are subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.). The collections of information involved in this
rule have been reviewed and previously approved by OMB under the following
control numbers: 0651-0009, 0651-0050.
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
For the reasons given in the preamble and under the authority contained
in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office is amending part
2 of title 37 as follows:
PART 2-RULES OF PRACTICE IN TRADEMARK CASES
1. Amend Sec. 2.6 by revising paragraph (a)(1) and adding subparagraphs
(a)(1)(i) and (a)(1)(ii), to read as follows:
Sec. 2.6 Trademark fees.
* * * * *
(a) * * *
(1) For filing an application:
(i) On paper, per class-$375.00
(ii) Through TEAS, per class-$325.00
* * * * *
2. Amend Sec. 2.86 by revising paragraph (a)(2) to read as follows:
Sec. 2.86 Application may include multiple classes.
(a) * * *
(2) Submit an application filing fee for each class, as set forth in
Sec. 2.6(a)(1).
* * * * *
3. Amend Sec. 2.87 by revising paragraph (b) to read as follows:
Sec. 2.87 Dividing an application.
* * * * *
(b) In the case of a request to divide out one or more entire classes
from an application, only the fee for dividing an application under
paragraph (a) of this section, as set forth in Sec. 2.6(a)(19), will be
required. However, in the case of a request to divide out some, but
not all, of the goods or services in a class, the application filing fee,
as set forth in Sec. 2.6(a)(1), for each new separate application to be
created by the division must be submitted, together with the fee for
dividing an application under paragraph (a) of this section, as set forth
in Sec. 2.6(a)(19).
* * * * *
STEPHEN M. PINKOS
Acting Under Secretary of
Commerce for Intellectual Property and
Acting Director of the United States
Patent and Trademark Office