U.S. Trademark Office Changes Are Effective January 2017

U.S. Trademark Office Changes Are Effective January 2017

New filing fees in the United States Trademark Office and the Trademark Trial and Appeal Board (Board) and revised rules of procedure before the Board for both new and pending cases will go into effect this month, after ten years with no change. Trademark owners should be aware of changes as they can affect the cost and timing of US trademark matters. Among the changes are increases in fees, of particular note are increases in fees for requests for extensions of time to oppose a third party application. These new filing fees may deter some frivolous extension filings and filings by small companies and individuals, but are not likely to have a large impact on major players. In addition, the sharpest increases are for paper filings when an electronic filing option is available; for instance, the initial paper filing fee for a one class trademark application is increasing from $375 to $600.

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Changes in the rules of Board procedure will affect the cost and timing of cases, including cases already in progress. For instance, when initially filing a case the plaintiff will no longer need to serve the complaint on the defendant at all. Instead, the Board will serve the complaint on the defendant(s) via the email address of record. The parties to a Board proceeding may also now agree to limit the scope of discovery and a new maximum of 75 of each Requests for Production and Requests for Admissions has been instituted; both of these provisions may reduce the quantity of discovery documents and therefore the cost of discovery. Another potentially cost-saving change is that parties will be able to attend hearings remotely via video conference. Others of the new procedural rules will affect the timing of cases. For example, parties can mutually agree to shorten the time frame for discovery and cases with relatively narrow claims can be accelerated using this new rule. The intent of the new procedural rules is streamline cases and encourage parties to consider strategies with their attorneys earlier in the proceedings to meet the new deadlines.

If you are considering a new filing in the Trademark Office or before the Board or need assistance with a current application or proceeding, consult the intellectual property department of your Ally Law member firm. Ally Law has law firm members in over 60 countries to help you plan strategically and globally to safeguard your trademarks, copyrights, and patents. For more information about Ally Law member firm services and outstanding lawyers, contact us at team@ally-law.com.

Click here for the original article by Tanya Curcio of Ally Law member Vorys, Sater, Seymour and Pease LLP.

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