Trademark Red Tape: Incoming Fee Increases And Sweeping TTAB Rule Changes

ASDJune 2016

Welcome to Trademark Red Tape, our periodic round-up of trademark news and happenings at the United States Patent & Trademark Office.  Here are the highlights:

  • Disparaging Marks Still Held in Abeyance. As an update to our last Trademark Red Tape, the USPTO, which has now filed a petition for a writ of certiorari to the Supreme Court in In re Tam with respect to the constitutionality of Section 2(a) of the Lanham Act, continues to suspend applications otherwise subject to refusal as potentially offensive, vulgar, or disparaging.  As we reported in March, the Federal Circuit held that the suspension of Tam’s own application pending disposition of the certiorari process was not a clear abuse of discretion, so applicants of marks which the USPTO believes may run afoul of Section 2(a) will likely be waiting a while.
  • Sweeping TTAB Rules Changes. On Monday, April 4, the USPTO published a Notice of Proposed Rulemaking in the Federal Register concerning Miscellaneous Changes to Trademark Trial and Appeal Board (TTAB) Rules of Practice.  The proposed rule changes, which would mark the first major set of changes for nearly a decade, are mainly designed to increase the speed and efficiency of TTAB proceedings, and include streamlined discovery, electronic filing requirements, and testimony via affidavit.  The proposed changes have been mostly well-received by the trademark bar, except that some have expressed concern about the move to testimony-via-affidavit-by-right, because in some cases it may not give the Board a full and fair opportunity to consider and weigh the credibility of witnesses.  This is of particular concern in light of the Supreme Court’s B&B Hardware v. Hargis Industries decision, discussed here, which held that TTAB decisions can have preclusive effect in subsequent civil actions.  Public comments were due June 3, 2016, and a public meeting to report and summarize these comments will be held on June 24, 2016.  Once adopted, the rules will apply to all cases, new and pending.
  • Updated TTAB Standard Protective Order. Effective June 24, 2016, the TTAB’s revised Standard Protective Order will be applicable to all then-pending TTAB inter partes proceedings, with some exceptions, as well as all proceedings instituted on or after the effective date.  Among other changes, the new Standard Protective Order eliminates the three-tier classification for confidential information, removing the “Highly Confidential” class in favor of “Confidential” and “Attorneys’ Eyes Only,” the latter of which is limited to outside counsel.
  • Proposed Fee Increases. The USPTO has issued a Notice of Proposed Rulemaking to establish and increase fees related to various USPTO and TTAB actions.  Many of the fees are clearly designed to promote efficiency, mainly by encouraging electronic filing whenever possible.  Public comments on the proposed fee changes are due by July 11, 2016. Notable changes include the following:
    • Changes to Application Fees. To encourage electronic filing throughout the application process, the fees for TEAS RF and TEAS Plus filings will remain $225 and $275 per class respectively, but the fee for the TEAS regular form will rise from $325 to $400, and the fee for paper filings will increase from $375 to $600, which better reflects the USPTO’s processing costs.
    • No Increase For SOU Extension Fees! The proposed fee increases, as originally introduced to the Trademark Public Advisory Committee (TPAC) back in October 2015, included substantial increases for an extension of time to file a Statement of Use (SOU). This seemed to unfairly burden startup companies and small businesses, and placed U.S.-based applicants at a further disadvantage vis-à-vis applicants able to file via a foreign registration or under the Madrid Protocol, neither of which requires a Statement of Use to secure registration.  The various IP bar associations strongly objected to these increases, and the TPAC ultimately encouraged the USPTO to pursue methods for increasing its revenue “in a way that will not disproportionately impact domestic filers.”   We’re happy to report that SOU/extension fee increases have been removed for electronic filings.  The SOU fee will increase from $100 to $200 for paper filings and the extension fee will increase from $150 to $250 for paper filings, to appropriately penalize luddites.
    • Increased TTAB Filing Fees. Notices of oppositions and petitions for cancellation will rise from $300 to $400 ($500 for paper filings), and ex parte appeals will increase from $100 to $200 ($300 for paper filings).
    • New Fees For Extensions of Time to Oppose. The initial 30-day extension of time to oppose a published application will continue to have no official fee, while the second 60 days for good cause will require a $100 fee ($200 for paper filings).  An initial 90-day extension for good cause, if taken all at once, will also cost $100 ($200 for paper filings).  The additional 60-day extension upon consent or exceptional circumstances will be $200 ($300 for paper filings).
  • TMEP April 2016. The USPTO released the April 2016 update to the Trademark Manual of Examining Procedure (TMEP), which incorporates recent precedential decisions and clarifies and memorializes various procedures.  The changes, highlighted in this document, include clarifications to the types of evidence appropriate for Letters of Protest.

We’ll be back soon with additional updates.

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