Effective January 18, 2025, the United States Trademark Office will be increasing certain fees and imposing new surcharges, the goals of which are to “enhance the quality of incoming applications, encourage efficient application processing, ensure additional examination costs are paid by those submitting more time-consuming applications, and reduce pendency.” The text of the Trademark Office’s new Examination Guide can be accessed here.
Examples of increased fees include the following:
– the fee to file a statement of use in connection with an intent to use trademark application will increase to $150 per class (from $100 per class);
– the fee for a Section 8 & 15 renewal of a trademark will increase to $575 per class (from $425 per class); and
– the fee for a letter of protest will increase to $150 (from $50). Similar $50 – $150 increases will be imposed on many other filing fees.
New and perhaps more concerning changes are three surcharges:
– a $100 per class surcharge for an incomplete application;
– a $200 per class surcharge if any goods or services listed in the class do not appear verbatim in the USPTO Acceptable Identification of Goods and Service Manual; and
– a $200 per class surcharge for descriptions exceeding 1000 characters, for every 1,000 characters beyond the first 1,000 characters.
We expect that for some clients, these changes will significantly increase the filing fees for U.S. trademark applications. The surcharges will likely disproportionately impact clients with unusual or highly specialized goods or services, and foreign clients who file in the United States based on a foreign application or registration (filing based on Section 44(d) or 44(e) of the Trademark Act), since foreign applications frequently include long descriptions of goods/services. On the bright side, tailoring the description of goods/services at the outset may reduce instances of office actions requiring amendments to the description of goods and services.
As an example, if there is an application in 4 classes based on an EU registration, if each class includes descriptions of 1600 characters, and if each class includes goods and services not in the Acceptable ID manual, the fee for an application will be:
$350 per class filing fee x 4 = $1400
$200 per class filing fee for characters in excess of 1000 x 4 = $800
$200 per class filing fee for goods not in ID manual x 4 = $800
Where last week, the filing fee for a 4 class application would have been $1400, the surcharges would result in the filing fee being $3000 – more than double. We might try to minimize or eliminate a surcharge by spending time amending the descriptions in advance, and trimming excessive goods/services – though this might not be an advisable strategy in all cases.
The new surcharges apply only to applications filed under Sections 1 and 44 of the Trademark Act, not those filed under the Madrid Protocol (Section 66). Therefore, the new fees might induce foreign clients to file applications in the United States as part of an International Application.
SGIP looks forward to working with clients and instructing foreign counsel to determine the best prosecution strategy on a case by case basis, as we all get used to the USPTO’s new rules.
