Weekly IP Buzz for the Week Ending December 18, 2020

December 21, 2020 Darin M. Klemchuk

In this week's post, we see that 2021 brings new changes to trademark filing fees associated with filing with the USPTO.

Plus, as the Brexit transition period ends, trademark owners and practitioners should be aware of the effect on existing EUTM registrations and requirements for and currently pending applications to ensure continued coverage of rights in the UK.

As US Trademark Fees Increase in 2021, An Adjustment to Portfolio Maintenance & Strategy May be Needed

On January 2, 2021, the United States Patent and Trademark Office (“USPTO”) is slated to increase the fees related to trademark applications filed with the USPTO. The increase in fees will affect a wide variety of trademark fees, including but not limited to, new applications, renewals, and opposition filings (which will be discussed in more detail in next week’s blog).

While the fees will vary depending on the submission, trademark clients and counsel alike must take into account these new fees in order to adapt current trademark portfolio management and strategies to accommodate the increase in fees. The trademark fee changes are as follows, for standard Trademark Electronic Application System (“TEAS”) applications, the cost will increase by $75 per class. And for the TEAS Plus option, fees will increase by $25 per class. The processing fee for failing to meet TEAS Plus standards has been lowered from $125 down to $100.

These changes in US trademark fee increases make it so that an applicant’s total costs for using the TEAS Plus option, even with a failure to meet requirements rejection, will total out at $350, which is the exact same price as the new filing fee for standard TEAS applications. Attorneys and clients alike should note that these fee changes are per class.

The Brexit Transition Ends in 2021: Things to Know as EU Marks Cease to Have Force in UK

The last day of 2020 marks the end of the Brexit transition period for trademarks making EUTM registrations unenforceable in the UK. However, not all will be lost. Trademark owners and practitioners should be aware of the changes and requirements that will automatically become effective on the first of the year, to help ensure rights are properly secured and any required actions are handled appropriately.

While EUTM registrations will have no force in the UK on January 1st, such registrations will automatically be replicated into a new UK registration with the same priority date, allowing for continued protection in the UK. The UK is not charging for this “new” registration right, but is granting it automatically. However, it is important to note that the UK trademark office will not be providing any notice of such registration. Therefore, it is necessary for rights holders seeking continued protection in the UK to ensure that the registration right granted in the UK is updated with a UK representative and address, for proper handling and maintenance.