USPTO Finalizes Trademark Fee Increases and New Application System
The USPTO published its final rule concerning changes to the trademark fee structure and new application filing system, which take effect on January 18, 2025, linked HERE. The goal of the new fee structure is to ensure sufficient funding for the trademark system, incentivize on-time examination through accurate application filings, and decrease the overall time required to complete the registration process. Although there are incentives to the new structure, it is strongly recommended, especially for application filings, to act before the effective date due to changes to application filing requirements.
Notable Changes to Application Fee Structure
Base Application Fee per Class: The new fee will be $350 for every class for all applications. This fee applies when the applicant uses the pre-approved descriptions from the USPTO ID Manual. In addition to pre-approved descriptions, the information required for a base application is the same as current TEAS-Plus requirements in 37 CFR 2.22. A list of these requirements is provided below, including, e.g., mark description, color claim, translation, signed application, etc. If this information is not included in the filing, the USPTO will assess surcharge fees.
Surcharge for Non-Standard Description of Goods: The new fee structure includes a $200 surcharge per class when the application uses the free-form text box to enter a custom description of the goods or services. In other words, the government fee per class with a non-standard description of goods is $550.
Long Description Surcharge: If non-standard descriptions in the free-form text box are greater than 1,000 characters, the applicant will have to pay an additional $200 per class for every set of 1,000 characters. The characters include any text, punctuation, and spaces.
Insufficient Information/Incomplete Application Surcharge: There is a new $100 fee per class if the base application filing is missing the required information for the specific filing. This applies to the list of 19 items required in the initial filing, but for now, it is unclear whether the surcharge will apply to other situations, such as if the examiner disagrees with the form of the color claim provided. The USPTO advises that applicants can contest the surcharge by contacting the examiner’s supervising attorney.
Changes to the Madrid Protocol Fee Structure[i]
The above-mentioned fee structure changes do not apply to applications filed under the Madrid Protocol, or Section 66(a) because the WIPO application filing system cannot currently accommodate surcharges. This may change in the future with WIPO system changes. However, Madrid fee increases will apply as follows:
Base Application Fee per Class: For Madrid applications, the base application fee will increase from $500 to $600.
Section 71 Declaration Fee Increase: The new fee filing a Section 71 declaration will increase from $225 to $325.
Statement of Use (SOU) and Amendment to Allege Use (AAU) Fee Adjustments
The fees for both SOUs and AAUs will be increased from $100 to $150 per class. Although the USPTO has not increased these fees since 2002, the recent increase in filings of questionable specimens has led to an increase in Office Action issuance.
Declarations of Use/Renewals
There is an overall rise in post-registration maintenance costs for filing. The most significant ones are stated below.
Section 8 and 71 declarations per class (electronic): The fee has increased from $225 to $325.
Section 15 declaration per class (electronic): The fee has increased from $200 to $250.
Madrid Protocol: The new renewal fee for applications filed through the Madrid Protocol will be $350 per class, effective February 18, 2025.
Summary Chart of Fee Adjustments[ii]
Requirements for a base application to receive the $350 per class fee:
In addition to selecting goods from the USPTO’s ID Manual comprising less than 1,000 characters, the application must include the following information, if applicable:
The applicant's name and domicile address;
The applicant's legal entity;
The citizenship of each individual applicant, or the state or country of incorporation or organization of each juristic applicant;
If the applicant is a domestic partnership, the names and citizenship of the general partners, or if the applicant is a domestic joint venture, the names and citizenship of the active members of the joint venture;
If the applicant is a sole proprietorship, the state of organization of the sole proprietorship and the name and citizenship of the sole proprietor;
One or more bases (ITU, Use based, foreign priority, foreign registration) for filing that satisfy all the requirements;
If the application contains goods and/or services in more than one class, compliance with all the same requirements for a single class application;
A filing fee for each class of goods and/or services,
A verified statement (declaration), dated and signed by a person properly authorized to sign on behalf of the owner;
If the applicant does not claim standard characters, the applicant must attach a digitized image of the mark. If the mark includes color, the drawing must show the mark in color;
If the mark is in standard characters, a mark comprised only of characters in the Office's standard character set, typed in the appropriate field of the application;
If the mark includes color, 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, a description of the mark;
If the mark includes non-English wording, an English translation of that wording;
If the mark includes non-Latin characters, a transliteration of those characters;
If the mark includes an individual's name or likeness, 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 Office records of the prior registration(s) for the same mark differs from the owner(s) listed in the application, a claim of ownership of the registration(s) identified by the registration number(s);
If the application is a concurrent use application, compliance with all applicable requirements;
An applicant whose domicile is not located within the United States, or its territories must designate an attorney as the applicant's representative, and include the attorney's name, postal address, email address, and bar information; and
Correctly classified goods and/or services, with an identification of goods and/or services from the Office's Acceptable Identification of Goods and Services Manual within the electronic form.
The insufficient information surcharge will apply if an application fails to satisfy any of the first 19 requirements in this list.
Impact on Trademark Holders and Best Practice Recommendations
Act before January 18: To minimize costs, plan to make filings affected by the fee increases before the effective date. These include new applications, declarations of use, and statements of use, among the others listed above.
Looking ahead, trademark owners should anticipate an increased trademark budget in the coming new year, as they will affect all phases of the trademark application process, through renewal.
National filings after January 18, 2025, will require careful planning ahead for the filing of new applications to avoid some of the cost increases. For example, if possible, selecting goods and services from the ID Manual, rather than using free form text descriptions.[iii] In addition, making sure that characters entered do not exceed 1,000 will avoid incurring a long description surcharge. Also, addressing each of the 19 required pieces of information for a base application and including relevant information will avoid incurring a missing information surcharge.
It should be noted that national filings based on Paris Convention priority should be planned with enough time for owners to sign declarations to avoid insufficient information surcharge fees. Base applications must be submitted as signed.
Given the complicated changes the USPTO has implemented to new applications, and penalties for incorrectly filing a base application, it is now more important than ever that trademark owners work together with trademark attorneys to ensure budgets are aligned with spend on US trademark registrations. Renner Otto is here to assist you in navigating these changes efficiently and effectively. Feel free to reach out to the above listed authors or your normal Renner Otto attorney.
[i] Any fee increases to applications under Madrid Protocol will take effect on February 18, 2025, due to the Madrid Agreement which requires three months’ advance notice to WIPO before a fee increase.
[ii] For the full list of trademark fee adjustments, visit the USPTO Summary of 2025 Trademark Fee Changes Page.
[iii] The USPTO will implement a system by which applicants can propose new goods to be added to the ID Manual. https://www.uspto.gov/trademarks/guides-and-manuals/trademark-identification-goods-and-services-manual-suggestions. Review is touted to take only 1-2 days. If accepted, it will appear in the next weekly update. Trademark owners filing multiple applications for the same or similar goods that are not included in the ID Manual would be wise to take advantage of this opportunity as a strategy to maximize cost savings.