On March 24, 2015, in B&B Hardware, Inc. v. Hargis Industries, Inc., the Supreme Court held that a Trademark Trial and Appeal Board (TTAB) decision is to be given issue preclusion effect when the usages it adjudciated are materially the same as those before a later district court proceeding.
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According to random audits by the United States Patent and Trademark Office (USPTO), over half of active trademark and service mark registrations include some goods or services that are not actually being used in commerce. Registrations with goods or services not in use may block mark owners from registering their own marks that are in use. As part of a response to this concern, the Trademark Trial and Appeal Board (TTAB) is piloting a program for cancellation proceedings limited to abandonment and/or nonuse claims with no counterclaims.
The program implements a procedure for addressing registrations or classes not use, which can save petitioners time and money. Click here for more information on this pilot program from the TTAB. A recent precedential case that was part of the pilot program also provides further insight, TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, 128 U.S.P.Q.2d 1786 (TTAB 2018).
The United States Patent and Trademark Office (USPTO) protects consumers and provides benefits to businesses by effectively and efficiently carrying out the trademark laws of the United States. After considering the state of the U.S. economy, the operational needs of the agency, and the comments and advice received from the public during the 45-day comment period, the USPTO is setting or adjusting certain trademark fees. The changes are detailed in the USPTO’s Final Rule, effective January 2, 2021.
The changes will allow the USPTO to continue to recover the prospective aggregate costs of strategic and operational trademark and Trademark Trial and Appeal Board (TTAB) goals. These changes will further USPTO strategic objectives by better aligning fees with costs, protecting the integrity of the trademark register, improving the efficiency of agency processes, and ensuring financial sustainability to facilitate effective trademark operations. The changes include increases in trademark application filing fees, post-registration fees, petition fees, a NEW letter of protest fee, and TTAB fees. The main changes are shown below, see the Final Rule for more information and details.
Application and Application-Related Fees
- TEAS Standard: $350 per class (up from $275 per class)
- TEAS PLUS: $250 per class (up from $225 per class)
- Processing fee for failing to meet TEAS Plus requirements: $100 per class (down from $125 per class)
- Section 8 or 71 declaration filed through TEAS: $225 per class (up from $125 per class)
- NEW FEE for deleting goods, services, and/or classes from a registration after submitting a section 8 or 71 declaration, but before the declaration is accepted: $250 per class if filed through TEAS
- No fee if you electronically file a section 7 request to amend your registration before submitting a section 8 or 71 declaration and only delete goods, services, and/or classes in the request
Petition to the Director and Letter of Protest Fees
- Petition to the Director filed through TEAS: $250 (up from $100)
- Petition to revive an abandoned application filed through TEAS: $150 (up from $100)
- NEW FEE for letter of protest: $50 per application
- Petition to cancel filed through ESTTA: $600 per class (up from $400 per class)
- Notice of opposition filed through ESTTA: $600 per class (up from $400 per class)
- Initial 90-day extension requests for filing a notice of opposition, or second 60-day extension requests for filing a notice of opposition, filed through ESTTA: $200 per application (up from $100 per application)
- Final 60-day extension request for filing a notice of opposition, filed through ESTTA: $400 per application (up from $200)
- Ex parte appeal filed through ESTTA: $225 per class (up from $200 per class)
- NEW FEE for second, and subsequent, requests for an extension of time to file an appeal brief in an ex parte appeal filed through ESTTA: $100 per application
- NEW FEE for appeal briefs in an ex parte appeal filed through ESTTA: $200 per class
- NEW FEE for requests for oral hearings: $500 per proceeding
- *The USPTO is implementing partial refunds for petitions to cancel in default judgments if the cancellation involves only a nonuse or abandonment claim, the defendant didn’t appear, and there were no filings other than the petition to cancel.