05-833. Changes in Fees for Filing Applications for Trademark Registration

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Final rule.

SUMMARY:

The United States Patent and Trademark Office (Office) is amending its rules of practice to adjust the fee for filing a trademark application for registration based on whether the application is filed on paper or electronically using the Trademark Electronic Application System (TEAS). Specifically, the Office is amending its rules to provide that: The fee for a trademark application filed on paper shall be increased to $375.00 for each class of goods or services; and the fee for a trademark application filed through TEAS shall be decreased to $325.00 for each class of goods or services.

EFFECTIVE DATE:

January 31, 2005.

FOR FURTHER INFORMATION CONTACT:

Cheryl Black, Office of the Deputy Commissioner for Trademark Examination Policy, by telephone at [phone], or by e-mail to [e-mail].

SUPPLEMENTARY INFORMATION:

The Office is amending the trademark rules of practice governing the payment of fees for trademark applications to require payment based on whether the application is filed on paper or electronically through TEAS. Specifically, the Office is amending its rules to provide that: (1) The fee for a trademark application filed on paper shall be increased to $375.00 for each class of goods or services; and (2) the fee for a trademark application filed through TEAS shall be decreased to $325.00 for each class of goods or services.

Background

The Consolidated Appropriations Act 2005, Pub. L. 108-447, (Appropriations Act) was enacted on December 8, 2004. The Appropriations Act amends the Trademark Act of 1946 to require that:

[D]uring fiscal years 2005 and 2006, under such conditions as may be prescribed by the Director, the fee under § 31(a) of the Trademark Act * * * for (1) the filing of a paper application for trademark registration shall be $375; (2) the filing of an electronic application shall be $325; and (3) the filing of an electronic application meeting certain additional requirements prescribed by the Director shall be $275.

This final rule adjusts the trademark application filing fees for applications filed pursuant to § 1 or 44 of the Trademark Act on paper to $375.00 per class and applications filed pursuant to § 1 or 44 of the Trademark Act through TEAS to $325.00 per class in accordance with the provisions of 15 U.S.C. 1113(a), as amended by the Appropriations Act. The purpose of the lower fee for TEAS applications is to encourage applicants to file trademark applications electronically and to respond to any outstanding issues electronically. The Director will not prescribe rules for electronic applications that qualify for a filing fee of $275.00 until the Office deploys the information technology systems necessary to process these applications. Electronic applications in this third category will have additional filing date requirements.

The filing fee for Madrid Protocol applications under § 66(a) of the Trademark Act (66(a) applications) will remain unchanged. The Office will amend the filing fee for 66(a) applications in accordance with the requirements and procedures set forth in the Rule 35 of the Common Regulations Under the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to That Agreement (Common Regs.) (April 1, 2004) and issue a notice of the effective date of the change. The rule change in § 2.6 is waived as to 66(a) applications until the procedures required by the Common Regs. are completed.

References below to “the Act,” “the Trademark Act,” or “the statute” refer to the Trademark Act of 1946, 15 U.S.C. 1051, et seq., as amended.

Discussion of Specific Rules

The Office is amending rules 2.6, 2.86 and 2.87.

The Office is revising § 2.6(a)(1) to provide that the fee for filing an application on paper is $375.00 per class, and that the fee for filing an application through TEAS is $325.00 per class.

The Office is amending § 2.86(a)(2) to provide that the filing fees for a multiple class application are based on § 2.6, which lays out a two-track fee system based on whether payment is made on paper or through TEAS. For example, if the applicant files a single class application through TEAS, the applicant must pay the TEAS application filing fee for the class identified in the application. If, on examination, the Office determines that it is a multiple class application, the applicant may respond through TEAS and pay the TEAS application filing fee for each additional class. Alternatively, the applicant may respond by mail or fax and pay the paper application filing fee for each additional class.

The Office is revising § 2.87(b) to provide that where a new separate application is created from a request to divide out some, but not all, of the goods or services in a class, the applicant must pay the fee for dividing the application and the applicable application filing fee as set forth in § 2.6(a)(1). Currently division requests can only be filed on paper, so the applicable filing fee will be $375.00 per class. However, in the future it will be possible to file a request to divide through TEAS, and at that point, if the request to divide is filed through TEAS, the TEAS application filing fee will apply.

Rule Making Requirements

Administrative Procedure Act: The final rule changes certain fees for filing trademark applications in order to conform to the trademark fees specified in 15 U.S.C. 1113(a) as amended by the Appropriations Act. Because these changes merely implement the fees set forth in the Appropriations Act, these rule changes involve interpretive rules and/or rules of agency practice and procedure under 5 U.S.C. 553(b)(A). See Bachow Communications Inc. v. FCC, 237 F.3d 683, 690 (D.C. Cir. 2001); Paralyzed Veterans of America v. West 138 F.3d 1434, 1436 (Fed. Cir. 1998); and Komjathy v. National Transportation Safety Board, 832 F.2d 1294, 1296-97 (D.C. Cir. 1987). Therefore, this final rule may be adopted without prior notice and opportunity for public comment under 5 U.S.C. 553(b) and (c), or thirty-day advance publication under 5 U.S.C. 553(d).

This final rule may also be adopted without thirty-day advance publication of the fee changes pursuant to 15 U.S.C. 1113(a). While nothing in the Appropriations Act or any other law requires delayed implementation of the fee changes in order to implement these fee changes, the Office must reprogram the trademark electronic filing system to accept the reduced fee. If TEAS is not reprogrammed before the fee changes go into effect, the Office will have to issue refunds to thousands of applicants for the amount paid in excess of the lower application filing fee. Such a corrective measure would be an administrative burden to the Office and to the public. Therefore, the Director has decided to briefly delay the implementation of the fee changes to allow the Office sufficient time to make the necessary programming changes. This final rule will go into effect on January 31, 2005.

Regulatory Flexibility Act

As prior notice and an opportunity for public comment are not required pursuant to 5 U.S.C. 553 (or any other law), neither a regulatory flexibility analysis nor a certification are required under the Regulatory Flexibility Act (5 U.S.C. 601 et seq.). See 5 U.S.C. 603.

Executive Order 13132

This rule making does not contain policies with federalism implications sufficient to warrant preparation of a federalism assessment under Executive Order 13132 (Aug. 4, 1999).

Executive Order 12866

This rule making has been determined not to be significant for purposes of Executive Order 12866.

Paperwork Reduction Act

This rule making involves information collection requirements which are subject to review by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The collections of information involved in this rule have been reviewed and previously approved by OMB under the following control numbers: 0651-0009, 0651-0050.

List of Subjects in 37 CFR Part 2

• Administrative practice and procedure
• Trademarks

For the reasons given in the preamble and under the authority contained in 15 U.S.C. 1123 and 35 U.S.C. 2, as amended, the Office is amending part 2 of title 37 as follows:

PART 2—RULES OF PRACTICE IN TRADEMARK CASES

1. The authority citation for 37 CFR Part 2 continues to read as follows:

Authority: 15 U.S.C. 1123; 35 U.S.C. 2, unless otherwise noted.

1a. Amend § 2.6 by revising paragraph (a)(1) to read as follows:

§ 2.6

Trademark fees.

* * * * *

(a) * * *

(1) For filing an application:

(i) On paper, per class—$375.00

(ii) Through TEAS, per class—$325.00

* * * * *

2. Amend § 2.86 by revising paragraph (a)(2) to read as follows:

§ 2.86

Application may include multiple classes.

(a) * * *

(2) Submit an application filing fee for each class, as set forth in § 2.6(a)(1).

* * * * *

3. Amend § 2.87 by revising paragraph (b) to read as follows:

§ 2.87

Dividing an application.

* * * * *

(b) In the case of a request to divide out one or more entire classes from an application, only the fee for dividing an application under paragraph (a) of this section, as set forth in § 2.6(a)(19), will be required. However, in the case of a request to divide out some, but not all, of the goods or services in a class, the application filing fee, as set forth in § 2.6(a)(1), for each new separate application to be created by the division must be submitted, together with the fee for dividing an application under paragraph (a) of this section, as set forth in § 2.6(a)(19).

* * * * *

Dated: December 29, 2004.

Stephen M. Pinkos,

Acting Under Secretary of Commerce for Intellectual Property and Acting Director of the United States Patent and Trademark Office.