Preserve Your Active Trademarks by Understanding and Avoiding New USPTO Fees
By Procopio Associate Lisa Teixeira Águeda
The U.S. Patent and Trademark Office (USPTO) is imposing new fees in an effort to ensure the trademark registrations on the federal register are in use with all of the goods/services listed. If an owner fails to delete or provide proof of use for all the goods/services listed, a fee will be imposed. Ensuring registrations cover only the goods/services in use allows the USPTO to grant new applications and increases the utility of the federal register. Failure to adhere to the fee requirements will result in cancellation of a trademark registration. It is important trademark owners understand these new fees and steps can be taken to avoid the fees and ensure valuable intellectual property rights are not lost.
By way of background, the USPTO requires certain maintenance filings be periodically submitted after registration in order to keep a trademark registration active. The maintenance filings are an attestation under penalty of perjury that the mark is being used with all of the goods/services covered in the registration (unless there is an excusable non-use exception). Although the USPTO requires this attestation, it does not require the owner to demonstrate proof of use for all of the goods/services in the registration, as the recitation of goods/services can sometimes be quite extensive. If certain goods/services in the registration are no longer in use, the owner should delete the unused goods/services before or as part of the maintenance filings.
If a request to delete is not made and the USPTO issues an audit (request to see proof of use with additional goods/services), the USPTO will require the owner to delete the items for which proof is not provided and pay the accompanying $250.00 fee per deleted goods/services and/or class. Additionally, if an owner attempts to delete unused goods/services after the maintenance filings, the fees will also be imposed.
How can your business avoid the fee?
- Advise your outside trademark counsel as soon as possible when certain goods stop being manufactured and sold or certain services are no longer offered under a registered mark so that the list of goods/services can be promptly corrected before the next maintenance filing is due.
- Instruct your outside trademark counsel to delete the unused goods/services when it sends notice of the required maintenance filings.
In sum, the USPTO is charging a penalty fee to deter trademark owners from gaining an unfair business advantage over others by having rights to marks not in use with all of the goods/services. Trademark owners will want to work with outside counsel to ensure their registrations are protected and avoid penalty fees.
Lisa Teixeira Águeda is an Associate on Procopio’s Intellectual Property team in its Trademarks and Copyrights practice. She advises clients on domestic and foreign trademark matters, including the development and management of trademark portfolios, resolving conflicts over disputed marks, and establishing, policing and enforcing rights in trademarks. Lisa also advises clients on copyright protection, registration, and enforcement of creative works.