118    Payment of Fees

118.01    Lists of Fees and Charges

A list of the fees and charges established by the USPTO for trademark cases may be found in 37 CFR § 2.6, and online at the USPTO’s website, www.uspto.gov. A list of fees and charges established by the USPTO for miscellaneous services may be found in ., as well as on the USPTO website.

A list of fees and charges for processing correspondence relating to international applications and registrations under the Madrid Protocol may be found in 37 CFR § 7.6  as well as on the USPTO website. International fees that may be paid to the International Bureau of the World Intellectual Property Organization through the Office in connection with international applications and registrations may be found in 37 CFR § 7.7  as well as on the WIPO website, www.wipo.int.

118.02    Fees Payable in Advance

37 CFR § 2.206  Trademark Fees payable in advance.

  • (a) Trademark fees and charges payable to the Office are required to be paid in advance; that is, at the time of requesting any action by the Office for which a fee or charge is payable.
  • (b) All fees paid to the Office must be itemized in each individual trademark application, or registration file, or trademark proceeding, so the purpose for which the fees are paid is clear. The Office may return fees that are not itemized as required by this paragraph.

37 CFR § 2.101  Filing an opposition.

  • (a) An opposition proceeding is commenced by filing in the Office a timely notice of opposition with the required fee.
  • * * * *
  • (d)
    • (1) The opposition must be accompanied by the required fee for each party joined as opposer for each class in the application for which registration is opposed (see § 2.6).
    • (2) An otherwise timely opposition will not be accepted via ESTTA unless the opposition is accompanied by a fee that is sufficient to pay in full for each named party opposer to oppose the registration of a mark in each class specified in the opposition.
    • (3) If an otherwise timely opposition is submitted on paper, the following is applicable if less than all required fees are submitted:
      • (i) If the opposition is accompanied by no fee or a fee insufficient to pay for one person to oppose the registration of a mark in at least one class, the opposition will be refused.
      • (ii) If the opposition is accompanied by fees sufficient to pay for one person to oppose registration in at least one class, but fees are insufficient to oppose registration in all the classes in the application, and the particular class or classes against which the opposition is filed is not specified, the opposition will be presumed to be against the class or classes in ascending numerical order, including only the number of classes in the application for which sufficient fees have been submitted.
      • (iii) If persons are joined as party opposers, each must submit a fee for each class for which opposition is sought. If the fees submitted are sufficient to pay for one person to oppose registration in at least one class, but are insufficient for each named party opposer, the first-named party will be presumed to be the party opposer. Additional parties will be deemed to be party opposers only to the extent that the fees submitted are sufficient to pay the fee due for each party opposer. If persons are joined as party opposers against a multiple class application, the fees submitted are insufficient, and no specification of opposers and classes is made at the time the party is joined, the fees submitted will be applied first on behalf of the first-named opposer against as many of the classes in the application as the submitted fees are sufficient to pay. Any excess will be applied on behalf of the second-named party to the opposition against the classes in the application in ascending numerical order.
    • (4) The filing date of an opposition is the date of receipt in the Office of the notice of opposition, with proof of service on the applicant, or its attorney or domestic representative of record, if one has been appointed, at the correspondence address of record in the Office, and the required fee, unless the notice is filed in accordance with § 2.198.

37 CFR § 2.111  Filing petition for cancellation.

  • (a) A cancellation proceeding is commenced by filing in the Office a timely petition for cancellation with the required fee.
  • * * * *
  • (c)
    • (1) The petition for cancellation must be accompanied by the required fee for each party joined as petitioner for each class in the registration for which cancellation is sought (see § 2.6).
    • (2) An otherwise timely petition for cancellation will not be accepted via ESTTA unless the petition for cancellation is accompanied by a fee that is sufficient to pay in full for each named party petitioner to petition for cancellation of the registration of a mark in each class specified in the petition for cancellation.
    • (3) If an otherwise timely petition for cancellation is submitted on paper, the following is applicable if less than all required fees are submitted:
      • (i) If the petition for cancellation is accompanied by no fee or a fee insufficient to pay for one person to petition for cancellation against at least one class in the registration, the petition for cancellation will be refused.
      • (ii) If the petition for cancellation is accompanied by fees sufficient to pay for one person to petition for cancellation against at least one class in the registration, but fees are insufficient for a petition for cancellation against all the classes in the registration, and the particular class or classes against which the petition for cancellation is filed is not specified, the petition for cancellation will be presumed to be against the class or classes in ascending numerical order, including only the number of classes in the registration for which sufficient fees have been submitted.
      • (iii) If persons are joined as party petitioners, each must submit a fee for each class for which cancellation is sought. If the fees submitted are sufficient to pay for one person to petition for cancellation of the registration in at least one class but are insufficient for each named party petitioner, the first-named party will be presumed to be the party petitioner. Additional parties will be deemed to be party petitioners only to the extent that the fees submitted are sufficient to pay the fee due for each party petitioner. If persons are joined as party petitioners against a multiple class registration, the fees submitted are insufficient, and no specification of parties and classes is made at the time the party is joined, the fees submitted will be applied first on behalf of the first-named petitioner against as many of the classes in the registration as the submitted fees are sufficient to pay. Any excess will be applied on behalf of the second-named party to the cancellation against the classes in the registration in ascending numerical order.
    • (4) The filing date of a petition for cancellation is the date of receipt in the Office of the petition for cancellation, with proof of service on the owner of record, or on the owner’s domestic representative, if one has been appointed, at the correspondence address of record in the Office, and with the required fee, unless the petition is filed in accordance with § 2.198.

The filing fee for an opposition or cancellation proceeding must be tendered with the notice of opposition or petition for cancellation. A notice of opposition or petition for cancellation filed without a filing fee will not be accorded a filing date. [ Note 1.]

When a notice of opposition or petition for cancellation is filed using ESTTA, the correct fee will be calculated and payment must be made before the filing will be transmitted to the USPTO. Note that in order for fees to be properly calculated, each opposer or petitioner must be entered separately. [ Note 2.]

If an otherwise timely notice of opposition or petition for cancellation is submitted on paper with less than the full fee due, it will not be refused a filing date provided that the fee paid is sufficient for at least one opposer or petitioner to proceed against at least one class. If the classes to be opposed are not specified, the fee tendered will be applied to the classes of the subject application or registration, in ascending order, on behalf of the opposers or petitioners in the order they were named. [ Note 3.]

NOTES:

 1.   37 CFR § 2.101(d)(4)  and 37 CFR § 2.111(c)(4).

 2.   See Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (multiple opposers not entered separately in ESTTA, resulting in improper fee being calculated and paid; opposition considered to be properly filed by first-named opposer only).

 3.   37 CFR § 2.101(d)(3)  and 37 CFR § 2.111(c)(3).

118.03    Method of Payment--In General

37 CFR § 2.207  Method of payment.

  • (a) All payments of money required in Trademark cases, including fees for the processing of international trademark applications and registrations that are paid through the Office, shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank note, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. (Checks made payable to the Commissioner of Patents and Trademarks will continue to be accepted.) Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent to the Office by mail will be at the risk of the sender, and letters containing money should be registered with the United States Postal Service.
  • (b) Payments of money required for trademark fees may also be made by credit card except for replenishing a deposit account. Payment of a fee by credit card must specify the amount to be charged to the credit card and such other information as is necessary to process the charge, and is subject to collection of the fee. The Office will not accept a general authorization to charge fees to a credit card. If credit card information is provided on a form or document other than a form provided by the Office for the payment of fees by credit card, the Office will not be liable if the credit card number becomes public knowledge.

It is the practice of the Office to routinely accept, as "conditional" payment of a fee, a signed uncertified check. If such a check is returned for insufficient funds, the fee remains unpaid, and the filing date of the fee will be the filing date of any resubmitted adequate payment. [ Note 1.] An unsigned check will be returned to its sender, but the Director has the discretion to accept such a check, as "conditional" payment, upon petition showing sufficient cause therefor. [ Note 2.]

The Office cannot accept U.S. Treasury checks that have been issued to the applicant or to another party as payment of Office fees. This is true for all refund checks whether issued from the Office or any other government agency. Office rules require that money orders and checks be made payable to the Director of Patents and Trademarks and do not permit the acceptance of U.S. Treasury checks endorsed by the applicant in payment of fees.

Filers using ESTTA to file papers with the Board online will be prompted to pay any necessary fees as a part of the ESTTA filing process. When paying a fee through ESTTA, filers may utilize a credit card, electronic funds transfer, or a USPTO deposit account.

NOTES:

 1.   See In re Cantatore, 231 USPQ 742, 744 (Comm’r 1986) (petition to revive was denied because filing fee check was returned for insufficient funds).

 2.   See Dubost v. U.S. Patent and Trademark Office, 777 F.2d 1561, 227 USPQ 977, 980 (Fed. Cir. 1985) (Office has discretion), on remand, In re Dubost, 231 USPQ 887, 889 (Comm’r 1986) (sufficient cause not shown).

118.04    Method of Payment--Deposit Accounts

For the convenience of attorneys and the general public in paying fees and charges to the Office, deposit accounts may be established in the Office. [ Note 1.] The Office has an automated financial system, the Revenue Accounting and Management (RAM) system, that allows transactions to occur over the Internet through the Office website at www.uspto.gov. Deposit accounts can be maintained through the Internet and funds replenished by check or electronic funds transfer. [ Note 2.] A deposit account may be used for payment of any necessary fee when filing online using ESTTA, or when filing paper documents.

The fees for filing an ex parte appeal to the Board, an opposition, and a petition for cancellation, may all be charged to a deposit account, provided that the requirements of 37 CFR § 2.208  are met. However, the charging of a fee against an account that does not contain sufficient funds to cover it cannot be regarded as payment of the fee. [ Note 3.] Thus, the overdrawing of a deposit account may result in the loss of a vital date.

The Office will not accept ex parte appeals if the notice of appeal is not accompanied by at least a $100 fee or specific authorization to charge the deposit account for that fee, as opposed to a general authorization which may have been provided when the application was filed. A general authorization to charge a deposit account will only be effective upon petition to the Director. [ Note 4.] Because the general authorization can only be invoked on petition, the Board itself cannot accept the general authorization as a basis for treating the appeal fee as timely submitted.

NOTES:

 1.   See 37 CFR § 2.208  (Deposit accounts).

 2.   37 CFR § 2.208(c).

 3.   See 37 CFR § 2.208(b).

 4.   In re Sky is the Ltd., 42 USPQ2d 1799, 1800 (Comm’r 1996) ("Requiring the Office mailroom and the ITU/Divisional Unit of the Office to check each application file for a general authorization to charge a deposit account would place an undue and unmanageable burden on those sections of the Office.").