The new year is about to ring in, and with it, new fees are expected at the Canadian and U.S. Trademarks Office.
Starting January 1, 2021, the Canadian Intellectual Property Office (CIPO) will be raising fees by 2% annually for certain services. These fee increases are associated with filing new trademark applications and applications to extend the statement of goods/services of registered trademarks, issuing new registrations (applies only to applications filed before June 17, 2019) and renewals, requesting issuance of summary non-use 'section 45' cancellation notices and filing a statement of opposition. There will also be a 2% annual increase in fees to take the trademark agent qualifying exam and request that names be entered, maintained or reinstated on the list of trademark agents. Other fees relating to extensions in an opposition or cancellation proceeding, recording transfers of ownership of a trademark or obtaining certified copies of documents will remain the same in 2021.
The Trademarks Office has advised that the fee amount due will depend on the date the fee is received by the Registrar, and not the date on which the service was originally requested. If, for example, a trademark application was filed just before the end of the year but the proper prescribed fee was not fully paid by January 1st (this may occur if you filed a multi-class trademark application by paper but did not pay for all Nice classes), the adjusted prescribed fee would be due.
The Tariff of Fees of the Trademarks Regulations should be updated with the adjusted fees at the start of 2021. In the meantime, the list of fees for trademarks can be found on the CIPO website here.
While these fee changes in Canada are fairly modest, and not anticipated to rush a brand owner's decision to file a new Canadian trademark application before the end of the year, in the United States, several fees relating to trademarks and proceedings before Trademark Trial and Appeal Board (TTAB) will rise, some significantly, starting January 2, 2021. Below is a chart outlining notable fee increases with the US Trademarks Office and TTAB:
The U.S. Patent and Trademarks Office (USPTO) will also introduce new fees for deleting goods, services or classes from a registration after filing a declaration of ongoing use ($250 USD per class), filing letters of protest ($50 per application) and requesting an oral hearing in a TTAB proceeding ($500 per proceeding).
The USPTO indicated that these fee adjustments were necessary to offset increasing costs and to provide necessary resources for its trademark operations. Public comments were considered before the USPTO made its Final Rule in fee changes.
Brand owners contemplating filing new trademark applications in the U.S. are encouraged to act quickly if they want to benefit from the prevailing application fees. Given the significant increase in USPTO filing fees, overall costs for filing multi-class trademark applications can mount quickly, especially for foreign applicants (due to unfavourable exchange rates).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
