T.M.E.P. § 1109.15
Filing Fees

Executive summary:

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1109.15 Filing Fees

Payment of the filing fee for the statement of use is a statutory requirement that must be satisfied before the expiration of the statutory filing period. In re L.R. Sport Inc., 25 USPQ2d 1533 (Comm'r Pats. 1992).

In a multi-class application, if the applicant files the fee for at least one class of goods or services but fails to file the fees for additional classes, the examining attorney must require payment of the additional fees during examination of the statement of use. The additional fees may be paid after the time for filing the statement of use has expired, within the six-month period for response to the examining attorney's Office action.

If an applicant files a statement of use and a request to divide the application at the same time, and the fees submitted are sufficient for one but not both, the fees will be applied first to the statement of use, and the applicant will be notified of the deficiency. See TMEP §§1110.02 and 1110.04 for further information about filing fees for requests to divide.

If the applicant files a final ("insurance") extension request in conjunction with a statement of use (see TMEP §1108.03) , and the applicant submits fees sufficient for one but not both, the Office will apply the fees as follows: (1) if there is enough money to cover the extension request, the Office will apply the fees to the extension request to avoid abandonment of the application; or (2) if there is enough money to cover the statement of use, but not enough to cover the extension request, the Office will apply the fees to the statement of use.

See TMEP §1109.15(a) regarding returned checks, EFT and credit card payments that are refused by financial institutions, and fees charged to deposit accounts with insufficient funds.

1109.15(a) Processing Deficient Fees

If the filing fee for at least a single class is deficient (e.g., if the fee is charged to a deposit account with insufficient funds, an EFT or credit card payment is refused or charged back by a financial institution, or a check is returned unpaid), the fee for at least one class of goods or services must be repaid before the expiration of the statutory filing period. If the fee for at least a single class of goods or services is not resubmitted before expiration of the statutory deadline, the application is abandoned.

If a check is returned unpaid or an EFT or credit card payment is refused, and the statement of use was accompanied by an authorization to charge deficient fees to a deposit account (37 C.F.R. 2.208) that has sufficient funds to cover the fee, the Office will charge the filing fee for the statement of use and the fee for processing the returned check or refused payment (37 C.F.R. 2.6(b)(12)) to the deposit account.

If the examining attorney determines, before taking an action regarding the statement of use, that the filing fee for at least a single class of goods or services has not been paid, the examining attorney should refer the application to the ITU Unit for appropriate action.

If the examining attorney determines, after taking an action regarding the statement of use, that the filing fee for at least a single class of goods or services has not been paid, the examining attorney must refuse registration on the ground that the filing fee for the statement of use was not paid. If there is time remaining in the statutory period for filing the statement of use, the examining attorney should require the applicant to resubmit the filing fee on or before the statutory deadline. If a check was returned unpaid, or an EFT or credit card was refused, the examining attorney should also require submission of the processing fee required by 37 C.F.R. 2.6(b)(12); the processing fee may be paid after expiration of the statutory deadline for filing the statement of use.

If the fee for at least a single class has not been paid, and there is no time remaining in the statutory period for filing the statement of use, the examining attorney will issue an Office action refusing registration and stating that the application is abandoned because a proper statement of use was not filed within the time required by statute. 37 C.F.R. §§2.88(e)(1) and 2.88(h). In such a case, the examining attorney should issue a regular Office action, with a six-month response clause. If the applicant does not establish within the six-month response period that the fee for at least a single class of goods or services was paid prior to the expiration of the statutory filing period, the application will be abandoned.

If the fee for at least a single class is paid before expiration of the statutory deadline, but the fee for additional class(es) is deficient, the examining attorney will issue an Office action requiring payment of the fee. The fee may be submitted after expiration of the deadline for filing the statement of use, within the period for response to the examining attorney's Office action. If a check was returned unpaid, or an EFT or credit card payment was refused, the examining attorney should also require submission of the processing fee required by 37 C.F.R. 2.6(b)(12).

If the statement of use has been approved and the mark is registered when the Office learns that the fee for the statement of use was deficient, the Office will cancel the registration as inadvertently issued. If the fee for at least a single class of goods or services was not paid before the expiration of the statutory filing period, the application will be abandoned. If the fee for at least a single class of goods or services was timely paid, but the fees for additional class(es) have not been paid, the Office will restore the application to pendency and refer it to the examining attorney for appropriate action.

See TMEP §405.06 regarding payments that are refused.