Fresh air from the Trademark Office

It’s easy to gripe when the USPTO does something, or proposes to do something, that makes it harder to get a patent or harder to register a trademark.  But it’s only fair to recognize those times when USPTO gets things right by making something easier or better.  As a recent example, the USPTO got it right when it relaxed certain requirements for getting a patent application onto Track I.  And the USPTO got it right when it relaxed rules for CPAs in design patent applications.  Now USPTO has proposed rules which would make it easier (and cheaper) to get and renew a trademark registration.

To understand the new proposed rules, it will help to review the present pricing for filing a US trademark application.  The starting point is a fee of $375 per trademark class, to be paid upon filing or later if a class gets added during prosecution.  On the present pricing, the filer gets a discount of $50 per class for e-filing rather than filing on paper.  This reduces the fee to $325 per class.

Some years ago the USPTO came up with the awkwardly named “TEAS Plus” program.  With a “Plus” application, you promise to e-file, you promise in advance never to fax-file or paper-file anything, and you agree to receive all communications by email rather than on paper.  In addition you promise to pick your identified goods and/or services straight out of the ID Manual (the “Acceptable Identification of Goods and Services Manual“) rather than making up your own random list of goods and/or services.  Your reward for making these promises is a further discount of $50 per class, bringing the per-class fee down to $275.

From USPTO’s point of view, the clear and understandable goal is to provide an incentive for filers to do things that make USPTO’s work easier or more efficient.  The first of the $50 discounts (e-file instead of paper) has been a complete success, with the fraction of paper filing of new trademark applications reduced to something like 2% depending on how you measure it.

The second of the $50 discounts (given to those who make all of the promises required in a “Plus”) application has not been quite as successful in percentage terms.  Perhaps understandably, some trademark applicants prefer to make up their own random list of goods and/or services and do not want to have to take the time and trouble to look through the ID Manual to try to find the goods or services that they want to list.

(Another reason that some filers do not use Plus is that they can’t find their desired goods or services listed in the ID Manual.  What those filers might not know is that they can ask the USPTO to add things to the ID Manual and in many cases this would permit later use of Plus.)

I say that Plus has not been quite as successful in percentage terms, but that’s not the whole picture.  Buy a drink for any trademark examiner and they will tell you that they absolutely love it when the new application that lands on their desk is a Plus application.  Smart trademark filers try as hard as they can to use Plus whenever they can, because they know that trademark examiners feel this way.
(Yes I realize that for some fact situations, such as an ITU application where the client says it will take more than three years to get around to making actual use of the mark, it is smart instead to pick a filing approach that postpones the Notice of Allowance for as long as possible, for example by not using Plus and responding to each Office Action only at the end of the six months.)

Anyway what seems to have happened is that people within the Trademark Office have decided that the many promises that a filer must make to use Plus should be broken up into two separate sets of promises.  USPTO proposes that if you are willing to make all of the Plus promises except promising to draw your goods and/or services only from the ID Manual, that will be enough to get the (second) $50 discount.  This will be called an “RF” (for “reduced fee”) application.  And if in addition you are willing to make that one last promise to draw your goods and/or services only from the ID Manual, you will get a third $50 discount, bringing the per-class fee down to a mere $225.

To say this another way, the list of Plus promises that presently gets you a $50 per-class discount would, under the proposed rules, get you a $100 discount.

The main other thing that trademark filers do besides applying for trademark registrations is renewing those trademark registrations.  This too is a subject of the proposed rules.  As things now stand a filer seeking to renew a registration is charged $400 per class regardless of whether the renewal is sought on paper or electronically.  There is thus no direct fee-based incentive to e-file rather than paper-file.  Under the proposed rules an e-filed renewal would get a discount of $100 per class, bringing the per-class fee down to $300.

Sophisticated and high-volume trademark filers use TEAS for their renewals anyway, despite their being no fee-based incentive to do so.  It’s simply more convenient and faster to e-file renewals rather than paper-file them.

The main policy question of course is whether the magnitude of the actual cost savings within the Trademark Office due to these various programs such as Plus and RF would justify the particular amounts of the various discounts.  If it were to turn out that picking the ID from the ID Manual only saves the USPTO $10, then it would be unwise to give the filer a $50 discount for doing so.  One hopes that USPTO people have already given this plenty of thought.

But assuming that USPTO has picked the various discount amounts wisely, then it seems to me the proposed rules are a simple “win” for filers.  It’s nice to imagine that if you keep doing what you do now to get a $50 discount, it may some day yield instead a $100 discount.  It’s nice to imagine that the list of promises you would have to make to get a $50 discount would get shorter.  And it’s nice to imagine that the thing that you already do when you file a renewal (that is, e-filing rather than paper filing) would for the first time yield a $100 discount.

Comments are due June 23, 2014.




5 Replies to “Fresh air from the Trademark Office”

  1. The trademark side of things seems to take in more money than needed as it is, so as a government entity which doesn’t seek to profit, the fees should be lowered. If this is how they want to do it, this is fine with me (as it benefits me 🙂 ).

    The renewal fees for a section 8 and 15 affidavit are $300 now, not $400…

    1. Thanks for posting.

      I should have been clearer. The $400 fee for which a $100 discount is proposed (for e-filing) is the fee for the every-ten-years renewal (Section 9), not the six-year renewal.

  2. I don’t need anyone to buy me a drink to tell you that I don’t like examining TEAS Plus applications, in fact, I think the money saved is often lost in the long run. In addition to pulling these applications out of TEAS Plus status for failure to comply with the requirements set forth in Rule 2.22(a), more often than non-examining attorneys would believe, there is also the reality that on specimen examination, it becames often too clear that the applicant is not doing or making the described goods and services selected from the ID Manual. I would much rather see applicants using their own words to describe what they know they do or make.

    1. Thank you for posting.

      As I read your comment I realize I should have thought more about the context of the discussion with the Examining Attorneys whose reactions I was reporting. I think they were reacting to “Plus applications where the applicant did everything right”. Of course you are right to react negatively to a Plus application where the applicant failed to provide the citation to the applicant’s own previous registrations on the same mark, failed to provide a decent drawing, etc.

      But my best guess is that if an applicant were to give you a Plus case where everything was done correctly, you would like it.

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