Clients and colleagues often ask us to provide cost estimates for the preparation and filing of trademark applications in the United States. The answer has always been “it depends,” and now, a year into the USPTO’s implementation of surcharges, the answer is still “it depends.”
Factors that impact the cost of an application include:
- The number of classes in the application. The USPTO filing fee for a new application is $350/class.
- Whether the description of goods/services is from the USPTO’s acceptable identification of goods manual, or whether the client wants to use custom goods. If the goods are not included in the manual, then there is a $200 per class surcharge. If a client wishes counsel to convert the goods/services, then there will likely be a fee for that service, but the client will save the surcharge and avoid the cost of an office action requiring an amendment when the application is examined.
- The number of characters included in the description of goods/services. There is a $200 per class surcharge for every 1000 characters in excess of the first 1000. For example, if a lengthy description includes 2,350 characters, there will be a $400 surcharge.
- The filing basis. There are multiple filing bases in the United States. If an application is filed based on use in the United States, then at the time of filing, the application must include specimens and dates of first use. Once the registration is granted, there should be no further charges until renewal. If an application is filed based on “intent to use,” there can be significant additional charges depending on how long it takes for the trademark owner to commence use. It may be necessary to pay for extensions, and will ultimately be necessary to file an allegation of use. If an application is filed based on a foreign application, then there will be fees to submit the foreign registration certificate when it issues, and it may be necessary to pay for extensions if the issuance of the foreign registration is delayed.
- Whether the USPTO issues an office action. It is always possible that the Trademark Office will issue an office action, preliminarily refusing registration based on a technical issue (e.g.: requiring amendment of the description of services), or a substantive issue (e.g.: refusing registration based on a prior registration or pending application). The cost to prepare and file a response depends on the complexity of the refusal.
- Whether the client wishes counsel to conduct clearance in advance. Doing clearance work is optional, but will allow counsel to anticipate whether a mark is available for registration, or whether the client can expect a refusal.
Because of the many filing bases and surcharges, it is helpful to provide as much information to counsel as possible when requesting a cost estimate, so they can provide an accurate response. The new surcharges have made U.S. applications more expensive. But careful planning at the application stage (e.g.: conducting clearance, using goods/services from the USPTO’s acceptable identification of goods manual) can minimize the likelihood — and cost — of office actions, and clear the way for a smoother path to registration.
