USPTO Increases Fees for Trademarks

The United States Patent and Trademark Office (USPTO) will be increasing fees for various trademark matters. The USPTO’s website provides the full rundown.

Key Changes to Know

• Initial Application Fees: The cost of filing a trademark application will be increasing, especially if you use a custom description of your goods/services or if the description exceeds 1000 characters.

• Renewal Fees: It will cost more to renew an existing federal trademark registration, with significant increases for most maintenance filings.

• Letter of Protest: The fee for filing a letter of protest will triple to $150. This tool helps challenge other people’s trademark applications and can be a cost-effective way to defend your own trademark.

When Will the New Fees Start?

• These new fees are expected to take effect sometime during the 2025 fiscal year, which began on October 1, 2024. However, the exact start date is not yet finalized.

• The USPTO released its proposed fee changes in March 2024, and we expect a gap of several months between finalizing the rules and implementing the new fees.

Impact on Trademark Filing Costs

• Custom Descriptions: If you don’t use the standard pre-approved descriptions (from the ID Manual), you will pay a $200 surcharge per class. This can raise the cost of filing to $550 per class.

• Lengthy Descriptions: If your description exceeds 1000 characters per class, expect to pay an additional $200 for every 1000-character block. A long description could cost you up to $1350 per class.

Other Fee Increases

• Proof of Use: The cost to prove you are using your trademark after filing will increase. Filing a Statement of Use or an Amendment to Allege Use will rise to $150 per class, making Intent-to-Use applications more expensive.

• Maintenance Costs: The cost to maintain your trademark (such as Section 8 and Section 9 filings) will rise significantly. The combined cost for 10-year renewals will be $650 per class, up from $525.

The USPTO filing system with its various fees and surcharges tends to get more complicated, not simpler, every year.

Business and Brand Identity: Trademark, Assumed Business Name, and Legal Corporate Name

When starting and operating a business, there are three distinct legal names that can shape a company’s identity: trademark, assumed business name, and legal corporate name.  Each has a different purpose.  Understanding the difference is essential for businesses to protect their brand, comply with the law, and thrive in a dynamic market.

The Legal Corporate Name: A Business’ Legal Identity

The Legal Corporate Name is the official name registered with the state and serves as the company’s legal identity. It is the name under which the entity operates its business affairs and interacts with government authorities.  If you consider an assumed business name like someone’s nickname, then the legal corporate name is what’s printed on the business’ official ID and birth certificate (in this case, the Articles of Organization for a limited liability company or Articles of Incorporation for a corporation).

Changes to this name require careful consideration.  If you change your business’ name, you should consult with a lawyer because there are formal processes and checklists to follow.  Bank accounts, contracts, signage, insurance policies, website accounts and a host of other things might be affected.  For this reason it is important to be careful when selecting or changing a name, just like changing individual name.

Assumed Business Name: A Legal Requirement for Businesses With Nicknames

The government wants people to be able to identify who they are doing business with.  So if a person or business entity uses any name aside from their legal individual or legal corporate name, it must be registered as an assumed business name under Oregon law. This may be called a “dba” (for “doing business as”) or a “trade name” in other jurisdictions. 

If you operate under a different name and fail to register the assumed business name in Oregon, technically you are breaking Oregon law and could be subject to damages or modest fines.  So assumed business names are fundamentally a legal requirement for a business that adopts a nickname.

On the flip side, registering an Assumed Business Name essentially allows companies to operate under an alias. This legal alias provides flexibility in branding and market presence, acting as a practical tool for experimenting with different business identities. 

A company formed with “NewCo Venture Partners Incorporated” as its legal corporate name doesn’t have to hold itself out and advertise as that impersonal mouthful. They could register NewCo Venture Partners Incorporated with the assumed business name “Bill’s Corner Hardware” (assuming that’s available) and hold themselves out to the public as that instead.

Choosing an alternative Assumed Business Name can sometimes be a strategic decision, offering a path for businesses to test market responses without committing to a formal name change.

To select a new assumed business name in Oregon, the business name must be available in the Oregon Secretary of State’s database. That means that no other business with exactly the same name has an active (up to date) registration. If you do not renew your business registration, your name becomes available to be registered by another business.

However, registering your name does not imply you can legally use it – mere name registration is not the same as a trademark right from use in commerce. For example, you might be able to register “Starbucks Coffee and Tea” with the Corporation Division, but the real Starbucks could still sue you for trademark infringement. Another business can likewise register an assumed business name that’s like yours, but not exactly the same. You can, however, assert trademark rights against the other business if there is likelihood that consumers will confuse your two businesses (talk to a trademark lawyer about this first).

Trademark: An Exclusive Right

Think of a trademark as a proprietary right that the business can own if it is the first to use that name in its particular channels of commerce.  A trademark is a source identifier, that sets products or services apart from the crowd. 

If the name is already in use or diluted by similar users, then you don’t have strong trademark rights (and you might actually be infringing on someone else’s trademark rights).  But if the name sufficiently distinguishes the business’ goods or services from others’, then it can be owned as an asset. This includes the right to exclusive use within the owner’s geographic and market territory.  Federal and state trademark registrations can amplify and solidify these rights.

Registering a trademark (at the state or federal level) results in exclusive rights to use that mark in connection with specific goods or services. This protection is vital for brand recognition and safeguards against potential infringement. The scope of trademark rights is limited by the territory, goods, services, and first use date.  A trademark does not exist in the abstract, covering words alone.  Trademarks only exist when used in commerce with goods or services, in some identifiable territory.

Generally speaking, you can enforce trademark rights against a third party if the third party is using a similar trademark that is likely to cause consumers to be confused within your market and geographic territory.  The standard for trademark infringement is multifaceted and complex (so consult with a trademark lawyer before assuming whether something does or does not infringe).  But key factors to assess trademark infringement include: how similar are the trademarks and how similar are the goods and services.

Conclusion: Cementing A Meaningful Business Identity

Each business identifier plays a distinct role.  Whether starting a new business, operating an ongoing business, entering contracts, buying, or selling a business, consider the unique role each identifier plays in shaping the business and its presence for customers and vendors. By understanding the differences and leveraging the strengths of each, you can cement a valuable and meaningful identity for your business in Oregon.  Or at least cross “name” and “brand” off your to-do list.

Critical Terms for Intellectual Property License Agreements (Part 2)

An audit provision is a clause in an intellectual property license agreement that provides the right for the licensee (the party receiving the license) or the licensor (the party granting the license) to inspect the records of the other party to verify compliance with the terms of the agreement. This provision is included in intellectual property license agreements to ensure that both parties are complying with the terms of the agreement.

One common reason for an audit is to ensure that the licensee is paying the correct royalty fee. The license agreement will typically specify the amount of royalties that the licensee must pay for the use of the intellectual property. An audit provision gives the licensor the right to inspect the licensee’s records to ensure that the correct royalty fees are being paid. This helps to prevent the licensee from underreporting the amount of royalties owed, which would be a breach of the agreement.

Another reason for an audit is to ensure that the licensee is using the intellectual property in accordance with the terms of the license agreement. For example, if the license agreement restricts the use of the intellectual property to a certain geographic area or market segment, an audit provision can help to ensure that the licensee is not using the intellectual property outside that area. This helps to prevent unauthorized use of the intellectual property.

In addition to protecting the interests of both parties, an audit provision can also help to avoid disputes that may arise under the license agreement. For example, if the licensee disputes the amount of royalties owed, an audit provides a legal right for licensee to review royalty reporting without resorting to a lawsuit. Similarly, if the licensor believes that the licensee is using the intellectual property outside the terms of the agreement, an audit can provide evidence about whether or not a violation is occurring.

It is also important to consider limitations on the use of the audit provision. For example, the audit provision may specify that audits can only be conducted during business hours and with reasonable advance notice. Additionally, the frequency of audits may be limited to prevent excessive intrusion into the licensee’s business.

An audit provision is another critical component of an intellectual property license agreement. It provides a means for verifying compliance with the terms of the agreement, resolving disputes, and preventing unauthorized use of the intellectual property. The inclusion of an audit provision in an intellectual property license agreement helps to protect the interests of both parties and ensures that the license agreement is properly enforced.

Trademark applicants – beware spoofed calls that impersonate the USPTO

Scammers have recently started calling trademark customers and falsely claiming to be an employee with the United States Patent and Trademark Office (USPTO). The scammers use a tactic called “spoofing,” where they trick phone networks into displaying a fraudulent name, number, and location. They’re trying to trick you into believing you’re talking to the USPTO, so they can steal money or personal information from you.

If you receive a call from someone you suspect is a scammer, do not give them any personal identifying or payment information. The USPTO will never ask for your personal or payment information over the phone.

Critical Terms for Intellectual Property License Agreements (Part 1)

Intellectual property (“IP”) license agreements come in many shapes and flavors.  But all IP licenses boil down to one party giving another party permission to use some IP.

IP may include patents, trademarks, copyrights, trade secrets, and rights of publicity.  Some license agreements cover one type of IP like a single trademark, or copyrights for a single song, or maybe a single valuable data set.  But often a single license agreement covers multiple types of IP.

Because each type of intellectual property differs from other types, agreements covering multiple types of IP require different contract provisions.  A trade secret license requires airtight confidentiality terms, for example, while a typical copyright license may not.  So it’s a good idea to hire an experienced IP lawyer to make sure the contract handles each type of IP correctly.  Regardless of the subject IP, well-drafted IP license agreements address certain critical terms.  This series of blog posts will discuss critical considerations for all IP license agreements.

First, all IP license agreements must identify the correct parties.

Although this might seem obvious, it is worth confirming that key parties are correctly identified, consistent with the purpose of the license.  Licensor grants the rights — so does the identified licensor really own or have the right to license all the IP in the agreement?  Or is some of the IP legally owned by someone else?  Should a subsidiary or other party be licensing this IP instead?  It is critical to confirm the IP owner and understand licensor’s chain of title before entering the agreement.  If a licensor cannot legally license the intended IP, the entire deal could collapse.

Conversely, is the licensee (the one receiving the rights) the correct party to be granted the license?  Or should there be a different licensee?  Sometimes additional parties need to use the licensed IP, beyond the initial licensee, to realize the economic benefit of the deal.  But the parties negotiating the deal might not identify all those additional parties at the outset.  If the licensee has a family of related entities, subsidiaries, or key contractors, are they allowed to exercise the licensed rights too?

Typically, the licensee wants open sublicense rights, meaning the licensee can share the IP rights with other parties.  But the licensor wants control over parties who use the IP.  If the licensee and licensor are sharing profits, both parties may benefit from allowing other entities to use the rights, balancing licensor control with licensee’s right to easily sublicense.

If the parties don’t know all the entities that will need to use the rights, they can specify groups of acceptable sublicensees in advance, define what makes a sublicensee acceptable, or list other pre-approval criteria to qualify additional sublicensees.

Unless the agreement specifically prohibits it, basic contract law presumes that the parties can assign a contract to a third party.  Licensors typically want control over assignments, so they aren’t surprised by some new third party using their IP.  At the same time a licensee will want flexible assignability provisions to account for the possibility of reorganization, merger, or other transfers.

For more on IP licensing agreements, stay tuned for Part 2.

Federal Trademarks for CBD: “No CBD2GO” Says Trademark Trial and Appeal Board

The recent case of In re Blue Water Wellness, LLC (Serial No. 87893655) presents a useful summary of the legal status of CBD trademarks (and the USPTO’s “lawful commerce” requirements in general).

The USPTO only allows trademark registration for federally lawful commercial activity.  This gets tricky when someone files a trademark application based upon future “intent” to sell products that have uncertain legal status at the time of filing, but the legal status changes while the application is reviewed by the USPTO.

In this case, the applicant applied for the mark CBD2GO for “dietary beverage supplements for human consumption in liquid and dry mix form for therapeutic purposes; all of the foregoing containing CBD.”

The application was filed on April 28, 2018, and initially refused for being unlawful under the Controlled Substances Act.  That refusal was withdrawn after the passage of the 2018 Farm Bill and, instead, the USPTO newly refused the application for being unlawful under the Food Drug & Cosmetics Act.

Footnote 2, in this case, explains the Trademark Trial and Appeal Board’s logic: following the 2018 Farm Bill and USPTO Examination Guide 1-19, the Controlled Substances Act is no longer a basis to refuse hemp-derived CBD but the Food Drug & Cosmetics Act is a separate basis for unlawfulness and refusal.  As a result, hemp products with ingestible CBD are still generally not an acceptable lawful basis for federal trademark registration.

The Trademark Trial and Appeal Board also clarifies at the end of this case that “1(b) bona fide intent to use” in commerce cannot exist on a trademark application filing date if the applied-for goods are not lawful on that date.  You cannot file “hoping it will become legal.”

That said, with Examination Guide 1-19 the USPTO created an unusual exception for goods that became lawful after the 2018 Farm Bill.  If someone applied for hemp plant biomass-based upon future intent to use when it was unlawful, before the Farm Bill was signed into law on December 18, 2018, 1-19 created an exception for those applicants to amend their earlier filing date to December 18, 2018.  As a result of this exception, applicants who filed earlier (when the goods were unlawful) were rewarded by being able to amend and claim lawful bona fide intent starting from the date the law effectively changed.

Although federal trademark protection for CBD remains challenging (and for cannabis, or any unlawful controlled substance) it may still be advisable to evaluate creative application strategies, file early, and seek extensions in case the USPTO creates similar exceptions for goods that may become lawful in the near future.

USPTO Issues New Guidance for Cannabis-Related Trademark Applications

On May 2, 2019 the United States Patent and Trademark Office (USPTO) issued new guidance regarding cannabis-related trademark applications following the 2018 Farm Bill.  Although it’s not the best news for cannabis businesses, it’s not the worst news either, and it adds some welcome clarity to an otherwise muddy, inconsistent area of trademark practice before the USPTO.

The USPTO will continue its standing policy of refusing to register marks for cannabis-related goods and/or services that violate federal law (…although I still contend that this policy is wrong-headed, inconsistent with the USPTO granting cannabis patents, and contrary to the purposes and plain language of the Lanham Trademark Act which provides for registration of marks used in commerce, defined as “all commerce which may lawfully be regulated by Congress” i.e. all commerce that can be regulated and/or prohibited under Congress’ lawful powers, not merely commerce that is deemed lawful — but that’s a tirade for a different blog post or perhaps an appeal to the United States Court of Appeals for the Federal Circuit…).

Pursuant to the new guidance, the USPTO will continue evaluating whether goods or services identified in trademark applications are lawful under federal law including the Controlled Substances Act, 21 U.S.C. §§801 et seq. (CSA) in addition to the Federal Food Drug and Cosmetic Act, 21 U.S.C. §§301 et seq. (FDCA), and the Agriculture Improvement Act of 2018, Pub. L. 115-334 (the 2018 Farm Bill).  This much remains the same, so applicants can still expect to be denied trademark registrations for goods or services that are obviously unlawful (*cough* through Congress’ lawful regulating *cough*) under those statutes.

The new guidance now explicitly recognizes the status of hemp under the 2018 Farm Bill.  The 2018 Farm Bill removed “hemp” from the CSA, where hemp is defined as “the plant Cannabis sativa L. and any part of that plant, including the seeds thereof and all derivatives, extracts, cannabinoids [like CBD], isomers, acids, salts, and salts of isomers, whether growing or not, with a delta-9 tetrahydrocannabinol [THC] concentration of not more than 0.3 percent on a dry weight basis.”  As a result, cannabis and derivatives such as CBD, from hemp plants that contain no more than 0.3% delta-9 THC on a dry-weight basis are no longer controlled substances and therefore cannot be refused trademark registration on the basis of violating the CSA.

However, even if hemp-derived goods are legal under the CSA, not all CBD or hemp-derived products are lawful under the 2018 Farm Bill.  The use in foods or dietary supplements of a substance undergoing clinical investigations without approval of the U.S. Food and Drug Administration (FDA) violates the FDCA.  The 2018 Farm Bill explicitly preserved FDA’s authority to regulate products containing cannabis or cannabis-derived compounds under the FDCA.  CBD is an active ingredient in FDA-approved drugs and is a substance undergoing clinical investigations.  So the USPTO will be skeptical and likely deny applications for foods and dietary supplements touting CBD as an ingredient.

For applications involving “hemp,” the guidance reminds everyone that the USPTO examining attorney has authority to issue inquiries concerning the applicant’s commerce, and will specifically require information about the applicant’s authorization to produce hemp.  Applicants will be required to provide additional statements for the record to confirm that their activities meet the requirements of the 2018 Farm Bill.  Notably, the trademark office doesn’t issue inquiries about complex regulatory compliance in other highly regulated industries.  The USPTO doesn’t ask whether SHELL or MARLBORO, for example, comply with all applicable laws and regulations when they apply for trademarks.

Furthermore, the CSA still makes marijuana illegal, including “all parts of the plant Cannabis sativa L., whether growing or not; the seeds thereof; the resin extracted from any part of such plant; and every compound, manufacture, salt, derivative, mixture, or preparation of such plant, its seeds or resin.”  So, under this guidance we can expect the USPTO to refuse registration when an application identifies goods encompassing CBD or other extracts that originate from marijuana (rather than hemp) because such goods remain unlawful under the CSA.

Despite the USPTO’s never-ending efforts to foster consistency among USPTO examiners, practicing trademark lawyers commonly complain about how different USPTO examiners review applications with different levels of scrutiny and care.  I like to cut the examiners some slack because they have enormous caseloads and their job is to be an expert on trademark law, not criminal law, FDA regulations, or agriculture.  But given the complicated, evolving status of cannabis’ legality, cannabis-related trademark applications have received particularly inconsistent treatment depending upon the USPTO examiners assigned to them.  Some cannabis-related applications would be rejected (for identifying unlawful “drug paraphernalia” for example) while others would not.  Because of that inconsistency, many astute cannabis businesses have successfully followed a “spaghetti strategy” tossing applications at the wall to see what sticks.

What’s new and helpful with the May 2nd guidance is the USPTO’s specific guidance about the lawfulness of cannabis, its byproducts, and related goods or services with an emphasis on clarifying the legal status of hemp and CBD.  This will help overworked USPTO examiners understand current cannabis laws so they can more consistently determine the lawfulness of goods or services listed in cannabis-related applications.

Options for cannabis businesses seeking brand protection at the federal level remain limited and complex.  And I expect that inconsistent results will continue, especially for goods or services that make more creative uses of cannabis and cannabinoids.  But at least the trademark office has taken a closer look at these issues and examiners should be granting more registrations more easily for lawful cannabis-related trademark applications.