The United States Patent and Trademark Office Issues its Final Rule Regarding Trademark Fee Changes
Published on November 18, 2024, the United States Patent and Trademark Office (“USPTO”) has issued its final rule setting or adjusting twenty-eight trademark-related fees. These changes become effective on January 18, 2025. Following, we will highlight some of those changes. The complete rule can be found in the Federal Register, here: final rule. We can provide a PDF copy of the final rule upon request.
After studying this rule thoroughly, we believe that the USPTO’s fee adjustments will make the filing of national trademark applications in the United States more complicated and increase costs for most applicants. There is a lengthy list of items that, if not fully complied with when the application is filed, will result in surcharges. Some of these surcharges will be very difficult to avoid, especially for foreign applicants. Please note that extensions of protection under the Madrid Protocol are currently exempt from most of the surcharges discussed below. We believe that under some circumstances the filing of U.S. trademark applications via the Madrid Protocol, where available, may result in overall cost savings for many foreign applicants.
For U.S. attorneys, the amount of work that will be required to prepare and file trademark applications will increase significantly. Applicants should expect that most attorneys will have to raise their flat fees to account for the increased time required.
For many applicants, three issues will be of the most significance:
Going forward, the USPTO encourages use of its list of pre-approved descriptions of goods and services as listed in the “Trademark ID Manual” (https://idm-tmng.uspto.gov/id-master-list-public.html). Failure to use the terms exactly as found in the ID Manual, by using the free-form text entry field, will result in an additional fee of $200 per class. Accordingly, the fee for a single class application would increase from $350 to $550.
The USPTO will charge a new fee of $200 for each class description that exceeds 1,000 characters (including punctuation marks). There will be an additional $200 fee for each additional 1,000-character block. Therefore, applicants would do well to limit their trademark applications to their core goods and services and to faithfully comply with the U.S. requirement that an applicant must have a bona-fide intent to use the trademark in the U.S. on all goods and services listed in the application.
The USPTO will charge a $100 surcharge if the applicant does not supply translations of words in the mark, if the words have a meaning in any language that is commonly spoken. Therefore, every coined word must be checked for its meaning in practically all living languages. This imposes a significant burden on applicants.
Application Fees:
This final rule replaces the two types of application fees—Trademark Electronic Application System (TEAS) Plus and TEAS Standard—with one base application fee for applications under Trademark Act §§ 1 and 44. Customers will also see new surcharges based on the complexity and completeness of their application. The USPTO states that it expects the majority of applicants will only pay the base fee and will not be subject to any surcharges. We do not believe this to be correct.
For Madrid Protocol applications under Lanham Act § 66, the USPTO is adjusting the existing application fee to a level that the USPTO believes corresponds with what applicants would expect to pay, on average, if filing national applications directly under the USPTO’s base application and surcharge system. However, we believe that there is a significant likelihood that requests for extension of protection under the Madrid Protocol into the U.S. will be more cost-effective in the future.
Initial Application Fees (all fees are per class of goods and/or services):
*Going forward, there will be only one type of application. TEAS Standard and TEAS Plus have been eliminated.
Surcharges:
The USPTO is introducing surcharges for applications that are incomplete or contain custom identifications of goods or services. This USPTO’s stated rationale is that it wishes to “encourage more complete applications, which will improve examination efficiency and help reduce pendency.” As already mentioned above, the additional fee for using custom descriptions of goods and/or services will be $200 per class.
WIPO is currently unable to collect surcharges prior to recording a § 66(a) application. The USPTO has stated that it will reconsider a base filing and surcharge system for Madrid Protocol applications in the future after WIPO develops the capacity to implement surcharges.
*The USPTO lists a total of nineteen items that, if missing or incomplete, would trigger a $100 surcharge. These are:
Missing or incomplete name and domicile address of the applicant.
Missing or incomplete identification of applicant's legal entity.
Failure to state the citizenship of each individual applicant, or the state or country of incorporation or organization of each juristic applicant.
If the applicant is a U.S. domestic partnership, failure to state the names and citizenship of the general partners, or if the applicant is a U.S. domestic joint venture, the names and citizenship (or jurisdiction where it is organized) of the active members of the joint venture.
If the applicant is a sole proprietorship, failure to indicate the state of organization of the sole proprietorship and the name and citizenship of the sole proprietor.
If claiming more than one basis for the application, the applicant must comply with the requirements of § 2.34 of the Trademark Rules of Practice for each asserted basis or a surcharge will apply.
If the application contains goods and/or services in more than one class, the applicant must comply with § 2.86 of the Trademark Rules of Practice or a surcharge will apply.
Failure to pay the filing fee for each class of goods and/or services, as required by § 2.6(a)(1)(ii) or (iii) of the Trademark Rules of Practice.
Failure to include a verified statement that meets the requirements of § 2.33 of the Trademark Rules of Practice, dated and signed by a person properly authorized to sign on behalf of the owner pursuant to § 2.193(e)(1) of the Trademark Rules of Practice (this rule eliminates the option of filing an unsigned application and submitting the signed declaration later).
Failure to attach a digitized image of the mark if it is a design mark. If the mark includes color, the drawing must show the mark in color.
If the mark is in standard characters, a mark must be only in characters in the Office's standard character set, typed in the appropriate field of the application.
If the mark includes color, failure to include a statement naming the color(s) and describing where the color(s) appears on the mark, and a claim that the color(s) is a feature of the mark.
If the mark is not in standard characters, failure to include a description of the mark.
If the mark includes non-English wording, failure to include an English translation of that wording (this is a possible trap, since an applicant may not be aware that the word has a meaning in another language).
If the mark includes non-Latin characters, failure to include a transliteration of those characters.
If the mark includes an individual's name or likeness, failure to include either (1) a statement that identifies the living individual whose name or likeness the mark comprises and written consent of the individual, or (2) a statement that the name or likeness does not identify a living individual.
If the applicant owns one or more registrations for the same mark, and the owner(s) last listed in USTPO’s records of the prior registration(s) for the same mark differs from the owner(s) listed in the application, failure to include a claim of ownership of the registration(s) identified by the registration number(s).
If the application is a concurrent use application, failure to include a verified statement setting forth certain aspects of the concurrent use situation, as provided for in the rules and regulations of the USPTO.
For an applicant whose domicile is not located within the United States or its territories, failure to designate a U.S. attorney as the applicant's representative and must include the attorney's name, postal address, email address, and state bar information.
** Failure to correctly classify the goods and/or services, with an identification of goods and/or services from the USPTO's ID-Manual within the electronic form will trigger an additional fee of $200 per class at the time of filing the application.
Post-Registration Maintenance Fees:
Petitions and Letters of Protest Fees:
Intent-to-Use Fees:
The USPTO states that it has not adjusted the amendment to allege use (AAU) and statement of use (SOU) fees since 2002. The examination time for these filings has also increased due to the volume of questionable specimens the USPTO receives, requiring the USPTO to issue more office actions.
Conclusion:
We believe that the new fee structure and especially the surcharge system will impose significant additional burdens on applicants and lead to an increase in the overall cost of obtaining a trademark registration in the United States. As stated above, foreign applicants should consider relying on the Madrid Protocol when filing in the United States, as those applications are currently exempt from the surcharge system. While the foreign applicant should still expect to receive office actions requiring significant modifications to the descriptions of goods and services, the overall cost of responding to those office actions, through a U.S. attorney, should remain essentially unchanged. Under some circumstances, requests for extension of protection under the Madrid Protocol may prove to be a more cost effective way of obtaining trademark protection in the United States.
The above is only a general summary of this topic and not legal advice.
Please do not hesitate to contact us if you have any questions or concerns. We will be very happy to answer all of your questions.
Sincerely yours,
Thilo C. Agthe, Partner (thilo.agthe@wg-law.com)
Maria Luisa Palmese, Partner (maria.palmese@wg-law.com)
Kevin Murphy, Partner (kevin.murphy@wg-law.com
David T. Azrin, Partner (david.azrin@wg-law.com)
Carl M.R. van der Zandt, Partner (carl.vanderzandt@wg-law.com)
Michael J. Brown, Senior Counsel (michael.brown@wg-law.com)
About Wuersch & Gering LLP: Our firm provides legal services to international and domestic clients who appreciate the personalized attention they receive from our attorneys. We focus on international corporate and commercial matters, litigation, intellectual property, visa and immigration law, and tax issues. Because we understand the differences between U.S. and foreign business practices and legal concepts, we can bridge the gap between cultures. Because we are fluent in foreign languages such as German, French, Italian and Spanish, we can communicate effectively with our foreign clients.