USPTO updates and raises fees for 2021

Starting January 1, 2021, the USPTO will charge higher fees for trademark related matters. The old and new fees follow:

Application/Prosecution 

TEAS Standard application (per class) Old $275 New $350

TEAS Plus application (per class) Old $225 new $250

Post Registration 

Section 8 or 71 Declaration of Use (per class) Old $125 New $225

Deletion of goods and/or services from a registration after submitting a Section 8 or 71 declaration but before the declaration is accepted Old - No cost new $250

Petition/Letter of Protest

Petition to the Director Old $100 New $250

Petition to revive an abandoned application Old $100 new $150

Letter of Protest Old No Cost New $50

TTAB Fees

Notice of Opposition (per class) Old $400 New $600

Cancellation petition Old $400 New $600

Initial 90-day extension request for filing a notice of opposition, or second 60-day extension request (per application) Old $100 new $200

Final 60-day extension request for filing a notice of opposition (per application) Old $200 New $400

Ex parte appeal (per class) Old $200 new $225

Appeal Brief in ex parte appeal (per class) Old $0 New $200

Request for Oral Hearing Old $0 New $500

Court grants our Motion to Quash Subpoena issued by serial litigant

Larry Philpot Is an Indiana photographer. He has filed many lawsuits against people that uses images on their websites. That said, he often uploads those same images onto the Internet an supplies a license under the Creative Commons to use the images. In short, his copyright claims are questionable.

In January 2020, Mr. Philpot filed a case in the United States District Court for the district of Arizona. he sought the identity of over one dozen website owners who used Domains by Proxy to keep their identity anonymous. As a result, the Court issued a subpoena directing Domains by Proxy to turn over the information.

Our client hired Jonathan to quash (or void) the subpoena. Jonathan promptly drafted and filed a motion to quash the subpoena. He pointed out out deficiencies in Mr. Philpot’s case as well as his nature as a serial litigant. On April 21st , 2020, the Court granted the motion. Jonathan’s client will remain anonymous. And, staying anonymous, he or she cannot be sued.

This inexpensive strategy prevented a full-blown copyright lawsuit by nipping it in the bud.  It demonstrates that decisive action, coupled with a thorough research of serial litigants (such as finding deposition transcripts from other cases), goes a long way to ending cases before they begin.

The Order can be found HERE.

New presentations

Jonathan presented at Bradley University in March. That panel discussion was aimed at informing engineering students of opportunities practicing patent law. In April, he is presenting for the Illinois State Bar Association. During the ISBA’s “IP 101” day-long program, Jonathan will present on Trademark Law 101 and developments concerning cannabis trademarks, hemp trademarks, scandalous trademarks, and disparaging trademarks. Learn more here.

New copyright legislation introduced

Congress has introduced three new bills that touch on copyrights. Whether these bills will be heavily amended, let alone passed, is not known. But, their filing gives us some idea of what Congress is considering for copyright.

The first is the “Copyright Protection for Civilian Faculty of Certain Accredited Institutions.” In short, some civilian faculty of military institutions that write journal articles will own the copyright in the work, but may have to provide a license to the U.S. Government.

The next, the “Satellite Television Community Protection and Promotion Act of 2019,” amends the law to narrow the definition of “unserved households” that can receive compulsory licenses for satellite re-transmission of network stations and “super stations.”

A trademark clearance search could have saved some money for this applicant

There is nothing worse than wasting filing fees and driving your trademark application into a brick wall. Trademark attorneys can help you avoid that fate through clearance searches and analyses. Trademark attorneys, like Jonathan, are well versed in assessing the risk of adopting a mark, as its what they do day after day. As I tell my Intellectual Property Law for the Entrepreneur students, “You may be smarter than trademark attorneys, but they probably already closed whatever loophole you think you have on them.”

Here, the question was, can you register JUST SAY IT for "promoting healthy lifestyles encompassing physical, social, emotional and spiritual aspects of positive human oral communications.” You cannot. And one unlucky applicant found that out after applying for that mark and appealing to the Trademark Trial and Appeal Board after refusal.

The Trademark Trial and Appeal Board determined Nike’s slogan (and registered mark) JUST DO IT is “exceedingly famous.” In its recent case, the TTAB denied the applicant’s registration because of its confusing similarity to this famous mark.

Trademark attorneys can help you judge the degree of risk associated with adopting a brand. In doing so, you can mitigate your risk of wasting precious resources on trademark applications doomed to fail. Or, you may be able to avoid an infringement lawsuit you are doomed to lose