Effective January 18, 2025, the United States Patent and Trademark Office (USPTO) will implement substantial increases to trademark fees, impacting application filings, post-registration maintenance filings, and Letters of Protest and Petitions to the Director.
Notable Changes
The new fee structure, which Venable publicly objected to introduces new fees in applications that do not comply with numerous requirements which were previously addressed during examination when and if raised by the examining attorney. Some of the notable changes likely to impact clients the most include the following deficiencies which will incur additional filing fees:
- Applications that do not use the USPTO's pre-approved language in the identification of goods/services
- Identifications of goods/services beyond 1,000 characters per class
- Proper classification of goods/services and payment for all classes
- Evidence of use and dates of first use for each class (if the application is based on use)
- Applications filed without the required declaration
- Applications filed without a translation or non-English wording or transliteration of non-Latin characters
These are only some of the requirements to avoid the additional government fees ranging from $100 - $200 per class, in addition to the $350 per class government filing fee.
Additionally, all maintenance fees have increased (including an increase of $100 per class for the Declaration of Use and $25 per class for the Renewal), as well as fees for Letters of Protest and Petitions to the Director.
A full listing of the various changes can be found here.
How to Prepare
Considering these imminent changes, trademark owners and foreign trademark attorneys should begin to re-think their US filing strategy to ensure they can still maximize protection while trying to stay within a reasonable budget. At a minimum, most foreign applicants who typically file in the US based on priority (and matching their US identification to the foreign identification) should expect to pay higher fees. Parties wishing to avoid fees should be sure to allow sufficient time when sending instructions so the application can be prepared and the declaration sent to the applicant for signature prior to filing.
At this point, Madrid applications are not subject to these increased fees (although the Madrid filing fee to the US has increased slightly) so foreign applicants may wish to explore whether filing into the US through Madrid is a more economical option (bearing in mind other restrictions of a Madrid application including those related to classification and if the mark is deemed descriptive).
In some cases (for example for emerging technologies), it may be worth paying additional fees to use non-approved language in your identification of goods/services to ensure your resulting trademark appropriate protects your rights. Working closely with your US trademark counsel will help ensure that your trademark rights are maximally protected while also balancing the economic pressures of doing so.
For more information on our previously submitted objections, please click here.