[Federal Register Volume 70, Number 12 (Wednesday, January 19, 2005)]
[Rules and Regulations]
[Pages 2952-2953]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-833]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 2

[Docket No. 2004-T-051]
RIN 0651-AB83


Changes in Fees for Filing Applications for Trademark 
Registration

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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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 (571) 
272-9565, or by e-mail to [email protected].

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 Sec.  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 Sec.  1 or 44 of the Trademark Act on 
paper to $375.00 per class and applications filed pursuant to Sec.  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 Sec.  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 Sec.  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 Sec.  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 Sec.  2.86(a)(2) to provide that the filing 
fees for a multiple class application are based on Sec.  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 Sec.  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 Sec.  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,

[[Page 2953]]

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.

0
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

0
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.

0
1a. Amend Sec.  2.6 by revising paragraph (a)(1) to read as follows:


Sec.  2.6  Trademark fees.

* * * * *
    (a) * * *
    (1) For filing an application:
    (i) On paper, per class--$375.00
    (ii) Through TEAS, per class--$325.00
* * * * *
0
2. Amend Sec.  2.86 by revising paragraph (a)(2) to read as follows:


Sec.  2.86  Application may include multiple classes.

    (a) * * *
    (2) Submit an application filing fee for each class, as set forth 
in Sec.  2.6(a)(1).
* * * * *
0
3. Amend Sec.  2.87 by revising paragraph (b) to read as follows:


Sec.  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 Sec.  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 Sec.  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 Sec.  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.
[FR Doc. 05-833 Filed 1-18-05; 8:45 am]
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