July 2020
The USPTO is preparing to increase fees for many trademark filings (new applications, renewals, appeals, and more). I spoke at a hearing last fall, and raised many concerns. While I am pleased to see that a few of my suggestions have been incorporated into the proposal, I am still very concerned about the the impact the fee increases will have on small businesses - the lifeblood of the economy - who are already adversely affected by the impact of the pandemic. Read on for more details and information about how you can submit public comments to the USPTO.

Comment process: In the fall, the USPTO had limited discussions with stakeholders about the fee proposal. I am not aware of any efforts to publicize widely the fee increase proposal to business owners or small businesses. In fact, since the Notice of Proposed Rulemaking the USPTO has not sent any alerts to its subscribers or via social media to even announce the request for comments. As such, many did not find out about the NPRM until several weeks after it was published. The deadline of August 3, 2020 is too soon and more widespread notice ought to be considered.
Financial justifications: The NPRM notes that overall, the fee increases proposed will generate approximately 20% more revenue for the USPTO. And it notes that without such revenue, the tradamark operations would face a major budget shortfall. Just a few quarters ago, the USPTO touted that the trademark division had a growing surplus. According to the most FY2019 annual TPAC report, the trademark operation collected $329m in FY2018 and spent $316m, and the trademark operating reserve grew to $135m. The TPAC report also noted that in FY2018 "the USPTO considered its 5-year financial outlook and determined that additional fee adjustments are not warranted at this time."

This significant turnabout must be explained in more detail. Yes, there is a pandemic and resulting economic impacts; but the change described by the USPTO is much greater. More data regarding the filing and fiscal projections could be shared; and much more information about the IT shortfalls and expenses ought to be provided. While upgrading and modernizing the systems is no doubt difficult, time consuming, and costly, the delays to date have been significant and the expenditures have repeatedly surpassed budget. As the USPTO asks users for more money, I urge it to share greater details and transparency about past and future IT expenses.

Specific increases and new fees proposed: I note there is not a single fee decrease featured in the proposal. The proposed fees for new applications would enlarge the difference between TEAS RF and TEAS+ from $50 to $100. I do not support such a gap; It is our experience that a majority of those who do not use TEAS+ choose not to use it because of the limitations of the ID manual and/or the accounting and reporting difficulties that may ensue if TEAS+ status is lost.

Furthermore, increased application filing fees will be felt disproportionately by smaller businesses - those who benefit the most from USPTO registration. I also note that any increase in filing fees may decrease the number of new applications, especially from small businesses, which would mean a less robust register.  Regarding renewal and maintenance fees, the proposed increases will likely decrease renewal filings, especially among small businesses. The increase in a Section 8 filing fee from $125 to $225 is nearly a doubling.

To conclude, I believe that while some fee adjustments are appropriate, I wonder whether some of the larger increases could be moderated. While I firmly support the need for IT improvements, I would like to see more transparency.

I also want to reiterate that small businesses will unquestionably be more burdened by increased and new fees. A Fortune 500 company with in-house counsel and a budget for IP protection, will not be terribly impacted by increases of a hundred dollars here or $400 there. But the local restaurant, the software company started by college students last summer, and startup snack company, certainly will be impacted. A loss of protection for them is a loss for the entire trademark system and diminishes the accuracy and completeness of the register. If small businesses don't register their marks at the same or greater rates than today, and if they can't afford to litigate disputes when justified by the law and the facts, the harm will extend far beyond the USPTO. It will impact the small business engine of the US economy.
How to comment:

Written comments must be received on or before August 3, 2020.The USPTO prefers that comments be submitted electronically via email to [email protected].

TEAS PLUS vs TEAS STANDARD trademark applications
There are significant differences between these a TEAS Plus application and a TEAS Standard application when applying for USPTO trademark registration. In this brief video, I discuss and detail the differences, including  limitations and costs, and explain my preference and the rationale why.

TEAS PLUS Trademark Application vs TEAS STANDARD
TEAS PLUS Trademark Application vs TEAS STANDARD

The 5 Habits of My Most Successful Clients
In nearly 20 years of practice in the field of trademarks with all types of businesses from all around the world, I've come to see some general themes among the trademarks, among the businesses, and among the clients. Over that time, I've filed thousands of trademark applications and received more than 3,000 registrations for my clients. I want to share with you today five things that the most successful clients all have in common.
  1. Number one is they don't delay. If they've got a new name, they move quickly to apply for it and start the process because they know that delay can harm the process and harm their ability to protect or use that name.
  2. Number two, they file not only for names, they file for logos and slogans, and other indicators of source. So they don't focus only on names, they focus on all the things that help create their brand that could be protected as trademarks to maximize the protection.
  3. The third common thing that they do is that they stay on top of renewal deadlines. Losing a registration can sometimes be overcome, but it's costly and it's risky because in trademarks the past history is extremely valuable so you never want to lose the history of a registration if you don't have to.
  4. Four, they move quickly when there are possible infringement situations. They don't delay because the longer a company that might be using your brand name or infringing on it without permission, the more invested in it they're going to become and the more likely they are to fight for it. So not only does the passage of time potentially harm your legal case, but as a practical matter, it means that it's more likely that the other side is going to dig in and therefore make it more contentious, make it more expensive, make it more cumbersome to resolve and deal with.
  5. And the fifth and probably most important attribute that I've seen among these most successful clients is that they don't do the trademark work themselves. Even if they don't use me, I'm happy as long as they use an expert, someone to guide them through the process.

Trademark News Roundup

Did you know that trademark filing statistics are actually up recently? How about the issues surrounding the Washington Redskins name change? In this podcast, Erik shares some important and fascinating trademark news from the last few weeks.
Thank you to all those who reached out to comment on ebook sent last month! And to those who have left reviews on Amazon for my Building a Bold Brand book. Your support and feedback means a lot to me.

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© 2020 Erik M. Pelton & Associates, PLLC.