What’s New In 2015 At The USPTO

The most popular change at the United States Patent & Trademark Office (“USPTO”) is the fee reductions for trademark applications and trademark renewals. These reductions become effective on January 17, 2015. The Trademark Electronic Application System (“TEAS”) at the USPTO allows for two types of trademark application filings. One is the TEAS Plus application which requires the applicant to utilize an identification in the Trademark Manual of Acceptable Identifications and to provide very specific information in its filing. It is less expensive because it requires less of the Examining Attorney’s time. Further information regarding the TEAS Plus application can be found at Trademark Manual of Examining Procedure (“TMEP”) §819.01.

The other is a TEAS application that permits the applicant to create its own identification for its goods or services in free text and allows more general information in the trademark application. However, the applicant must provide an email address and authorize the USPTO to send email correspondence relating to the trademark application for the duration of the application process. In addition, the applicant has to agree to electronically file through TEAS for certain submissions, such as voluntary amendments, responses to office actions (except notices of appeal), requests for reconsideration of final Office Actions, appointment or revocation of a power of attorney, and appointment or revocation of a domestic representative. The USPTO is referring to this filing option as TEAS Reduced Fee (TEAS RF) application.

An applicant that files a TEAS RF application, but does not satisfy the requirements will be mandated to submit an additional processing fee of $50.00 per international class of goods or services. The following types of trademark applications are eligible for TEAS RF: (1) Trademark/Service Mark Application, Principal Register; (2) Trademark/Service Mark Application, Supplemental Register; (3) Certification Mark Application; (4) Collective Membership Mark Application; (5) Collective Trademark/Service Mark Application, and (6) Transformation Requests. For more details see the USPTO’s webpage on the Reduced Fee initiative.

As mentioned above, the trademark application fees and trademark renewal fees will be reduced on January 17, 2015. On that date, the fees for electronic trademark application filings will change from either $275.00 per international class for a TEAS Plus filing to $225.00 per class and $325.00 per international class for a TEAS filing to $275.00 per class. This $50.00 per class reduction will benefit trademark applicants, especially those who include numerous international classes in their applications. The initiative will also help small businesses who were carrying a financial hardship due to the current Trademark fees. Lastly, this fee reduction will also serve to encourage more applicants to use TEAS at the USPTO and discourage paper filings that slow down the Examining Attorneys’ dockets. For more details, see the Final Rule published in the Federal Register.

The USPTO is also reducing the trademark renewal fee. A combined Declaration of Use and Renewal must be filed between the ninth and tenth year after the registration date, and then every ten years therefter. Effective, January 17, 2015 if you file online to renew your trademark application, your fee will be reduced from $400.00 per class of goods or services to $300.00 per international classification. The Continued Use Affidavit will remain at $100.00 per class of goods or services.

In addition, there have been changes made to the Nice Classification. As of January 1, 2015 these changes have become effective. This classification system aids trademark owners in describing and identifying their goods or services in their respective trademark applications. The classification system endeavors to keep up with our society’s new innovations and technologies. This tenth edition has been modified to incorporate new language for various goods and services, including electronic cigarettes and 3D printers.  click here to view the most significant changes to the Nice Classification system.

One final important change becoming effective late January 2015 is the USPTO will commence sending courtesy email reminders to registered trademark owners for upcoming post-registration maintenance filing deadlines for §§8 and 71 declarations and §9 renewals. These reminders will be sent to those registered trademark owners who have provided a valid email address to the USPTO and have authorized email communications. We will continue to update our blog with USPTO developments throughout 2015. In the interim, if you have any questions concerning any of the changes at the USPTO, please do not hesitate to contact one of our NY intellectual property attorneys.