U.S. Trademark fee increases and changes coming January 18, 2025 – What trademark owners should know
The United States Patent and Trademark Office has released its Final Rule, which includes adjusted filing fees for trademark applications and maintenance filings. The fee increases, which take effect on January 18, 2025, aim to provide sufficient financial resources to facilitate the effective administration of the trademark systems, while a new framework for application filing fees with surcharges aims to incentivize standard applications, decrease office actions during the examination of applications, and meet a long-term goal of shortening the prosecution timeline–but may require some adjustments to the preparation of applications and make budgeting for new applications more complex.
Background and Summary
Since 2021, the PTO has conducted a biennial review of fees, costs, and revenues. The latest review concluded that fee adjustments were necessary to provide the agency sufficient financial resources to facilitate an effective administration of the U.S. Trademark System. The PTO forecasted higher than expected inflation in the U.S. broader economy, along with an increase in demand for trademark services. As a result, the PTO’s goal with this change is to set a fee schedule that generates sufficient multiyear revenue to recover the aggregate costs of maintaining the PTO trademark services.
The fee changes align with the PTO’s four key fee setting policy factors to (1) promote innovation strategies, (2) align fees with the full cost of trademark services, (3) set fees to facilitate the effective administration of the trademark system, and (4) offer application processing options.
Below is a summary of the changes, followed by a chart of key fee increases for electronic filings.
Key Changes to Application Fees
The PTO is changing its initial filing fee framework with the goal of incentivizing more complete and timely filings and improving the prosecution of applications. To that end, it has introduced a standard base fee per class, with three types of surcharges for applications that may require more in-depth examination and likely office actions:
Single base, per class application fee: The new fees include a single base of $350 per class for all applications (replacing the current system of $250 for standard descriptions and $350 for all other applications).
- Surcharge for non-standard description: This new fee of $200 per class will apply where an applicant enters a description of goods or services using the free-form text box instead of using pre-approved descriptions from the USPTO’s Acceptable Goods and Services Manual (ID Manual).
- Surcharge for incomplete information: There will be a new fee of $100 per class for applications that do not include all of the information required for the specific filing.[1]
- Surcharge for long descriptions: Non-standard, free-form descriptions of goods or services in a single class that exceed 1,000 characters, including punctuation and spaces, will incur a fee of $200 for each additional 1,000 characters. This surcharge will not apply if all descriptions are selected from the ID Manual.[2]
- Madrid Protocol Applications and Registration Maintenance
Applications filed via the Madrid Protocol under section 66(a) will not be subject to the above new surcharges.
Instead, the existing flat application fee for Madrid applications, including subsequent designations, will increase from $500 to $600 per class, as paid in Swiss francs to the World Intellectual Property Organization (WIPO). The renewal fee for WIPO will go up from $300 to $355. These fee increases go into effect on February 18, 2025.[3]The Section 71 declaration fee, applicable to owners of registered extension of protection under the Madrid Protocol, is increasing from $225 to $325.
Statement of Use Increases
The PTO is increasing the fee to file evidence of use, both as a Statement of Use and Amendment to Allege Use, for the first time since 2022. The Final Rule states that the examination time for evidence of use has increased due to “increased submission of questionable specimens.” The fee for both filings is increasing from $100 per class to $150 per class.
Maintenance Filing Increases
Post-registration maintenance fees are increasing across the board. While the percentage of trademark registrants choosing to maintain their registrations has declined, costs to process maintenance filings have increased due to factors including post-registration audits and new review procedures to address potential fraud.
Shortening Prosecution Timeline
The PTO also notes it is committed to improving trademark application pendency. Recent filers are aware that the current time between filing and a first office decision is 7-8 months. This is 1-2 month after the priority filing deadline. This causes uncertainty as to the status at that deadline of the pending U.S. base application. The PTO calls the current timeline a “trademark pending challenge” due to the surge of applications in the fiscal year 2021. This surge culminated in an “unprecedented year-long influx,” which resulted in an increase of unexamined trademark applications. The PTO’s projected goal for application pendency to first office action for fiscal year 2025 remains the same as 2024 at 7.5 months, dropping to 6.3 months in 2026, 5.9 months in 2027, 5.5 months in 2028, and 4.9 months in 2029.
Key Takeaways
The new application fee framework, with a base charge and surcharges, may require applicants to make adjustments in their approach and budgeting for applications.
- Going forward, trademark applicants will want to work with their trademark counsel to ensure complete applications and use standard descriptions to avoid surcharges, if possible.
- Advance budgeting for new applications will be more complex, as applicants may not know if their application will be suitable for standard descriptions from the ID Manual–particularly clients in emerging technology fields where the standard descriptions may not suffice.
- Trademark owners who intend to file new applications may wish to file their applications before the fee increases take effect.
- Trademark owners whose renewal windows open before January 18, 2025 may wish to consider filing early in that window, to avoid the increased fees.
- The PTO’s Final Rule with all fee changes and increases can be found here. Please contact Sabrina Larson or Katherine Gianelli with any questions.
Key Filing Fee Changes
(all for electronic filings) The PTO has clarified that this surcharge will not apply where an applicant adds exclusionary language (to differentiate from goods or services of third parties) to standard descriptions from the ID Manual.
[1] During the notice and comment period, commenters expressed concern that some of the requirements for sufficient information are subjective to the examining attorney’s opinions and discretion, rather than factual objective standards–such as whether a description of a mark is detailed enough and whether a translation is required. The PTO acknowledged the concerns and noted that applicants can request a review of situations in which it believes that the surcharge shouldn’t have been applied. The PTO originally proposed applying surcharges to section 66.1(a) Madrid Protocol submissions, but dropped that because WIPO is unable to administer these charges at this time. WIPO requested that any surcharges for Madrid filers be delayed.
