The Consolidated Appropriations Act of 2005 signed by President Bush on December 8, 2004 will soon result in an increase in the cost of filing some trademark and service mark applications with the United States Patent and Trademark Office (PTO). The new fee requirements will apply to any applications filed on or after January 31, 2005. In its continuing effort to encourage the filing of electronic trademark applications through the Trademark Electronic Application System (TEAS) instead of paper applications, the PTO is:

1. increasing the filing fee for filing paper-based trademark applications from its current $335 per International Class to $375 per International Class; and
2. lowering the filing fee for electronic applications submitted via TEAS from the current $335 per International Class to $325 per International Class.

The increase in the application fees for paper-based filings and the fee reduction for electronic-based filings are also applicable when a trademark examining attorney requests that an applicant add additional International Classes to an already filed application. In such cases, an applicant should consider responding to office actions electronically to take advantage of the lower filing fee. The PTO is also directed by the new legislation to institute another trademark filing fee reduction, to $275 per International Class, under conditions to be prescribed by the Director of the PTO. It does not appear that this fee reduction will be effective by January 31. Instead, the $275 application fee will be implemented only after the conditions for its use have been prescribed by the Director and the TEAS system has been modified to accommodate the lower fee. There is some speculation that the $275 application fee will be available to applicants who both file the application through TEAS and use descriptions of goods and services that conform exactly to those prescribed by the PTO Acceptable Identification of Goods and Services Manual. If you have any questions regarding the information in this bulletin, please contact Bob Felber at (615) 850-8741 or Mark Plotkin at (615) 850-8567 or any other member of our Intellectual Property Practice Group. The opinions expressed in this bulletin are intended for general guidance only. They are not intended as recommendations for specific situations. As always, readers should consult a qualified attorney for specific legal guidance.