Used to be you had to pay a $40 fee to record an assignment at the USPTO. Adding a second property to the recordation cost $40 if you were recording a patent assignment but cost $25 if you were recording a trademark assignment.
I never understood why that second or third property cost one price for trademarks and a different price for patents.
Almost two years ago the USPTO cut the fee for recording a patent assignment to zero. This was welcome news. When that price cut happened, I recall wondering why this fee did not drop to zero for trademark assignments.
Today I got my chance. I am the vice-chair of AIPLA’s Patent Cooperation Treaty Issues committee, so I was present at a meeting of committee chairs, vice-chairs, and board members. Mary Boney Denison, the Commissioner for Trademarks, was a special guest. When she finished her prepared remarks, she asked if anybody had any questions. So I raised my hand and asked why it is that we have to pay money to record a trademark assignment when we don’t need to pay money to record a patent assignment.
The Commissioner looked at me. I got the impression that she may have gotten this question before. Her response was that the patent office did not check with the trademark office before announcing this price cut. And that the trademark office has no interest in reducing this fee to zero.
Now in fairness to the situation, the consequences on the world of IP of a nonzero fee for recording an assignment are different for patents than for trademarks. Most patents (nearly all of the patents handled by my firm) have an assignment recorded. In contrast, most trademark registrations go through their entire life without an assignment being recorded. Said differently, when the USPTO cut the price for recording a patent assignment to zero, this made a difference for hundreds of thousands of patent applications and patents per year. In contrast, if USPTO were to cut the price for recording a trademark assignment to zero, this would make no difference at all for the vast majority of trademark owners (whose trademarks generally only rarely change hands).
But Carl, that actually argues for cutting the trademark assignment fees. The Patent division gave up hundreds of thousands of dollars in revenues by eliminating patent recordation fees. The TM division would give up much less revenue than that, because so few assignments are recorded. So that’s another reason why TM assignment recordation should be free.
“In contrast, if USPTO were to cut the price for recording a trademark assignment to zero, this would make no difference at all for the vast majority of trademark owners”.
And in what way is this relevant to a fee being charged for trademark assignments and not for patent assignments?
As it is, the patent side of the PTO gave up a significant income stream, but what you’re saying is that the TM side would not have to. So why do they keep on charging the fee? – from the article, it sounds as if “we can charge it, so we do”.
It seems counter-intuitive. Drop the patent assignment fee to $0 and the PTO loses a lot of money.
Drop the trademark assignment fee to zero and the PTO loses very little money. If you had to chose, drop the trademark fee which results in a far smaller lose of revenue that dropping the patent assignment fee. ??