USPTO publishes Notice of Inquiry Regarding Filing Fee Adjustments

On August 16, 2012, the USPTO published a Notice of Inquiry Regarding Adjustment of Fees for Trademark Applications in the Federal Register.   As part of the USPTO’s continuing effort to move trademark filing processes to electronic filing, which is considered a cost reduction move (the processing of paper applications is associated with substantially higher costs), the Office is requesting comments regarding the possibility of raising the fee for paper applications and lowering the fees for TEAS-Plus applications.

For my non-US readers, TEAS and TEAS-Plus are the two options available to electronic filers.  Under TEAS, the applicant agrees to file electronically and to further prosecute the application electronically, via email communication only.  TEAS-Plus requires the additional commitment by the filer to select all goods and services from the pre-approved entries in the USPTO’s Acceptable Identification of Goods and Services Manual, which is commonly referred to as the ID-Manual.

My first reaction when I heard about this was to ask who might still be filing applications on paper.  I suppose there are some practitioners who are stuck in the Stone Age and don’t know how to turn on a computer.  That’s too bad, really, because electronic filing, whether you use TEAS or TEAS-Plus, has so many advantages that practitioners are really doing their clients, and themselves, a huge disservice by not availing of TEAS and TEAS-Plus.

I do I have criticisms of the electronic application process, such as my consistent inability to take advantage of the lower fees under TEAS-Plus, the result mostly of representing clients from other countries where the description of goods and/or services simply won’t fit into ID-Manual, but that is actually not a huge problem, most of the time.  To be quite honest, trying to shoehorn a description translated from German into something that can be found on the ID-Manual is usually simply not worth the time and effort.

So should there be more of an incentive to use electronic filing?  I would answer that question with a resounding YES!  The current fee structure, as the Notice of Inquiry helpfully tells us, is as follows:

Paper Application: $375 per class
TEAS Application: $325 per class
TEAS-Plus App.: $275 per class

Interestingly, the Notice of Inquiry does not suggest that the USPTO is looking at reducing the fee for TEAS applications.  I think that is a mistake, mostly because (I suspect without any actual evidence) that most applications are filed using TEAS and not TEAS-Plus.  If you really want to incentivize electronic filing, you have to make it easy for paper filers to move to electronic filing.  Practitioners who currently file on paper will be much happier and more comfortable, I would imagine, if they could move to the less stringent requirements of TEAS, rather than having to comply with the TEAS-Plus requirements of having to use the ID-Manual.

My view: double the fee for paper filing and reduce the TEAS fees to $275 and the TEAS-Plus fee to $250.  I don’t think the USPTO will agree with lowering the TEAS fee, but maybe they will agree that making paper filings prohobitively expensive will have the desired effect.

Being a user fee funded agency, the USPTO needs to make sure that fees will generate sufficient income to fund its operations.  Like most of my colleagues, I want the agency to continue to be fully funded through user fees, rather than depending on Congress to benevolently grant it funding, but maybe the doubling of the paper filing fee would have the necessary effect of bringing my less than computer-savvy colleagues into the 21st Century, even if we don’t get to enjoy a lowering of the TEAS fee.