Trademark Electronic Application System/TEAS Archives

PTO Proposes Trademark Application Filing Changes, Fee Adjustments

On March 26, 2024, the US Patent & Trademark Office (PTO) issued a notice of proposed rulemaking in the Federal Register concerning changes to trademark application filings and fee adjustments in trademark cases for 2025. The PTO solicits written comments from the public on the proposed rule changes on or before May 28, 2024. The proposed rules seek to generate sufficient multiyear revenue for trademark operations in future years based on projections described in the notice.

The changes are recommended to support the PTO’s strategic goals and objectives, including optimizing trademark application pendency through the promotion of efficient operations and filing behaviors, issuing accurate and reliable trademark registrations, and encouraging access to the trademark system for stakeholders.

The proposal seeks to incentivize more complete and timely filings, improve prosecution, adjust 31 trademark fees and impose 12 new fees while discontinuing six existing fees. The proposal also seeks to consolidate the present Trademark Electronic Application System (TEAS) filing options (i.e., TEAS Plus and TEAS standard) into a single electronic filing option. The single option would include most of the same requirements as TEAS Plus, while eliminating those under TEAS Standard. The new filing framework would discontinue the previous filing fees and fees for failing to meet the requirements of a TEAS Plus application. Similar to TEAS Plus, however, applicants complying with the proposed requirements in their initial filing would pay the lowest fees.

The proposed fee adjustments would:

Set the fee for a base application at $350 using the ID Master List (which is $100 more than the current fee for a TEAS Plus application)
Discontinue current fees for filing an application under the Madrid Protocol
Require surcharge fees between $100 and $200 for applications that are noncompliant with the base filing requirements
Require an additional $200 fee per class for the identification of goods and services entered in the free-form text field to incentivize use of the Trademark ID Manual for such identifications instead
Require an additional $200 fee for each additional group of 1,000 characters in the free-form text field; identifications directly from the ID Manual would not incur these fees
Increase fees by $50 for filing amendments to allege use (AAU) and statements of use (SOU), with fees being discounted $100 for electronic filings
Increase post-registration maintenance fees from $50 to $75
Increase the letter of protest fee from $50 to $150.

Regarding the proposed fee adjustments, the notice describes changes to 37 CFR 2.6 and 7.6. The notice further describes changes to 37 CFR 2.22 and 2.71 with respect to base application fees and amendments to correct informalities, respectively.

For further details, see the Federal Register notice.

Strings Attached: No Amendment for Trademark Application in Inter Partes Opposition Proceeding

The Trademark Trial & Appeal Board (Board) designated as precedential a decision denying a motion to amend and granting partial summary judgment based on a mistaken identification that did not match the goods sold using the trademark. Fender Musical Instruments Corporation v. Win-D-Fender, LLC, Opp. No. 91272326 (TTAB Sept. 22, 2022) (designated precedential Jan. 12, 2023) (Wolfson, Heasley, Cogins, ATJs) (By the Board).

Win-D-Fender applied for a trademark to register the mark EN-D-FENDER for “musical instruments.” Fender opposed this registration on grounds of nonuse, likelihood of confusion and dilution by blurring and filed a motion for summary judgment on the ground of nonuse. Win-D-Fender then filed a motion to amend the identification of goods in its application from “musical instruments” to “musical instrument accessories, namely, an ambient wind foot joint guard for flute family instruments.”

The Board first considered Win-D-Fender’s motion to amend. Under the relevant trademark rules, an application that is subject to an inter partes proceeding may only be amended if the other party consents (Fender did not) and the Board gives approval, or if the Board grants a motion to amend.

Win-D-Fender filed its application via the Trademark Electronic Application System (TEAS). In a TEAS application, only the goods listed in the proper field can be considered for the identification of goods and broadening the scope of the identification is not permitted. In Win-D-Fender’s application, the only goods listed in the “Identification” field were “musical instruments.” Win-D-Fender argued that its application included a miscellaneous statement reading, “For Musical Instrument Accessories namely a wind guard mounted to a flute.” The Board determined, however, that the description was not in the proper field and therefore was not considered in the identified goods. The Board explained that the TEAS Plus instructions warn applicants to not use the TEAS Plus “Identification” field if it does not contain an accurate listing of the goods and services and to instead use the TEAS Standard filing option. The Board noted that although the identification of “musical instruments” may have been a mistake, it is settled that an established identification cannot later be expanded. The Board concluded that Win-D-Fender was limited to amendments that would narrow or clarify the type of “musical instruments.”

Win-D-Fender also argued that musical instrument accessories would fall under the general umbrella of musical instruments. The Board stated that while musical instruments may use accessories, the accessories themselves are not musical instruments and are not encompassed in the “musical instrument” class. The Board, therefore, denied the motion to amend the identification of goods.

The Board next considered Fender’s motion for summary judgment on the ground of nonuse. An application based on use of the mark in commerce is void if the mark was not used in commerce in connection with the goods identified in the application. As the Board had already decided, Win-D-Fender’s mark was limited to musical instruments and did not include accessories. Fender specifically pointed to an interrogatory response in which Win-D-Fender stated that the products sold under the [...]

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