One of the most common questions I receive as a trademark attorney is “How much does this cost – from filing the application to getting the registration?” Thanks to the USPTO’s new fees and fee increases (effective early next year), it just got a lot harder to answer that seemingly simple question.
On November 18, 2024, the relevant Final Rule issued. You can read the full text here. If you don’t have the time or patience for all 30 pages of that PDF, I’ll summarize some of the key points below.
All of the below text refers to electronic filings.
When will these changes go into effect?
January 18, 2025 for applications based on Sections 1(a), 1(b), 44(d), or 44(e) (meaning, actual use of the mark in U.S. commerce, intent to use the mark in U.S. commerce, basing the U.S. application on a foreign-filed application, or basing the U.S. application on a foreign registration, respectively).
February 18, 2025 for applications based on Section 66(a) (meaning those filed to extend protection of a mark to the U.S. via the Madrid system).
What’s changing about the initial application filing fees and penalty fees?
Any application will be more expensive.
Madrids:
This is a lot simpler if we’re talking about a Madrid application: the cost per class will increase from $500 to $600.
Everything else:
Things get much more complicated when we look at any other type of application.
One new, more expensive application form replaces the two old form options.
Two application forms are currently available to those who file directly with the USPTO: (1) TEAS Plus and (2) TEAS Standard. TEAS Plus costs $250 per class, but you can only use it if you can describe the products/services you want to register your mark with using language that is pre-approved by the USPTO. TEAS Standard costs $350 per class and allows you to type in freeform text to describe the products/services you want to register your mark with. In either form, you can theoretically enter as many different products/services as you want per class for that fee of either $250 or $350.
The USPTO is getting rid of the TEAS Plus and TEAS Standard forms. There will just be one application filing form (called the "Base application"), and it will cost $350 per class. So, you can no longer access a less expensive filing form by using pre-approved language. There is no less expensive filing form. The price is automatically at least $100 more per class, even if you use pre-approved language.
The “penalty fee” for using freeform text instead of pre-approved descriptions is effectively doubling.
There are still strong incentives to use that pre-approved language. The first is that the USPTO is introducing a new penalty fee for using freeform text. It’s $200 per class. In a way, you could think of the cost difference between the old TEAS Plus and TEAS Standard applications as imposing a penalty fee of $100 for using freeform text. In that light, this just means that the USPTO doubled the penalty fee from $100 per class to $200 per class. This new fee does not apply to Madrid applications.
There’s a new penalty fee for long descriptions of products/services (with key exceptions).
The second incentive for using pre-approved language is that the USPTO is introducing a new penalty fee for descriptions of products/services that exceed 1,000 characters (yes, that includes spaces and punctuation). The fee is $200 per class for every group of 1,000 characters beyond the first 1,000 characters.
There are two key exceptions here. First this new penalty fee does not apply to entries that are taken from the ID Manual (our massive list of pre-approved language to describe goods and services).
Second: (and really funny to me): this new penalty fee does not apply to Madrid applications. In my experience reviewing trademark applications at the USPTO, most of those very long descriptions of goods and services were in Madrid applications. So how much will this really help?
An old penalty fee gets a new name.
The USPTO is introducing a “new” penalty fee for “insufficient information:” applicants who fail to meet any of 19 requirements must pay $100 per class. But if you review the 19 requirements (detailed in the Final Rule), you’ll start to notice a pattern: if the mark includes non-English wording, the applicant must provide an English translation; if the mark includes non-Latin characters, the applicant must provide a transliteration of those characters . . . don’t these sound a lot like the requirements for a TEAS Plus application? Failure to meet those requirements also subjected the applicant to a $100 per class penalty fee.
Our suspicions are confirmed by the Final Rule which actually makes plain that “[t]hese requirements are the same as the requirements for a valid TEAS Plus application under the current TEAS system, and the fee rate for the insufficient information surcharge is identical to the processing fee for failing to meet the requirements of a TEAS Plus application.”
Although, at first glance, the “insufficient information” fee appears to be something new, it really isn’t. This is the penalty fee for failing to meet TEAS Plus requirements, but since there will no longer be a TEAS Plus application, the penalty fee has a new name. And since there will no longer be a TEAS Standard option, all non-Madrid applications will have to meet these 19 requirements or suffer the consequences.
What about other parts of the application process?
We have multiple filing bases in the U.S. One of them, called “intent to use,” is a good fit for clients (a) who want to go ahead and apply to register their marks even through they cannot yet prove use of the mark in commerce that U.S. Congress can regulate and (b) who are not eligible for another filing basis.
If we file based on intent to use the mark, we’re adding another step into the application process. At some later point, we will have to submit proof that the mark is being used in commerce that U.S. Congress can regulate (with some minor exceptions related to amending the basis). We satisfy that requirement by filing an allegation of use. There are two types: an Amendment to Allege Use and a Statement of Use. The difference has to do with when we file them and doesn’t matter in this context because the fees for both are increasing from $100 to $150 per class.
The bottom line is that when you submit your proof of use, it’s going to cost you 50% more than it did in the past.
What about the fees to renew registrations?
Every single one of those is going up.
After the USPTO officially registers a mark, the mark owner still needs to take certain actions to keep that registration alive. Periodically, they will need to file certain maintenance and renewal documents with the USPTO. Exactly what needs to be filed will depend on the registration basis and how many years have passed since the mark registered in the U.S.
For marks registered in the U.S. via the Madrid system, Section 71 declarations filed to renew registrations will increase from $225 per class to $325 per class. The renewal fee filed at WIPO will also increase from $300 to $325.
For all other marks registered based on Sections 1(a) or 44(e) (based on actual use in U.S. commerce or on a foreign registration, respectively), Section 8 declarations are increasing from $225 per class to $325 per class; Section 9 declarations are increasing from $300 per class to $325 per class; and if you want to claim incontestability by a Section 15 declaration, that fee is increasing from $200 per class to $250 per class.
Any other fee increases I should know about?
Yes. By my count, there are more than 20 total increases – more than I can go into in depth here. If you want the full details, again, I’d recommend reading through the actual Final Rule. But there is one more I’d like to highlight. The fee for filing a Letter of Protest is going to triple.
A Letter of Protest is a way that we can attempt to influence the USPTO’s review of someone else’s application. We use them to try to put evidence that would support a refusal into the record of examination. Usually, I do this when someone else has applied for a mark that is confusingly similar to my client’s mark. We are prohibited from directly contacting the Examining Attorney assigned to that other person’s application. The Letter of Protest is reviewed by a different USPTO employee. If it meets certain requirements, the evidence is forwarded to the Examining Attorney and may influence their decision about whether to issue a refusal.
These have to be filed early in the application’s review process. But they can be a very cost-effective alternative to filing an opposition. These used to be free. In the USPTO’s last round of fee increases, they set a fee of $50 for these. In this round of fee increases, they are going to triple the cost to $150.
The USPTO claims to lose over $800 on reviewing each Letter of Protest, so I understand the desire to at least lose less. However, many trademark attorneys are not even aware that Letters of Protest exist, much less pro se applicants (people who have not hired an attorney and are trying to represent themselves). That means many mark owners who want to utilize this tool will be paying a trademark attorney fees for researching, drafting, and filing the Letter of Protest on top of the USPTO’s filing fees. The total cost is still far less expensive than an opposition, but for small business owners or solopreneurs, this $100 increase may move a Letter of Protest outside the limits of their budget.
Do you have any extra goodies for me?
Of course I do. Reading through these Final Rules always provides a few insights into USPTO operations apart from the basic information about the fee increases. There were two nuggets in this one.
First, the USPTO doesn’t project getting pendency (how long it takes after an application is filed with the USPTO until it is finally assigned to an Examining Attorney and reviewed) under six months until Fiscal Year 2027 at the earliest. As recently as 2019, pendency was under 3 months.
Why do we care? If a U.S.-based client hires me to file an application with the USPTO to register their mark, and they are hoping to use that U.S. application as the basis for a Madrid application to protect the mark in other countries, they find themselves in an awkward situation.
On one hand, if we file for the Madrid application within 6 months of our U.S. application filing date, we can claim priority, and that U.S. application filing date becomes our effective filing date for the applications we file via the Madrid system. We like our filing dates to be as early as possible to avoid other filers potentially blocking our path to registration in other countries. So, we have an incentive to try to file via the Madrid system within 6 months.
On the other hand, if we base that Madrid application on our U.S. application, and for some reason, that U.S. application fails to reach registration . . . it’s like dominos falling. The foreign applications based on that U.S. application will not reach registration. So, we have an incentive to wait and see if the USPTO Examining Attorney refuses the U.S. application (and if possible, to see whether the mark is opposed in the U.S.), before filing that Madrid application based on the U.S. application.
With a pendency of less than 3 months, we have plenty of time for the USPTO to review the application and (if no refusals issue or if they are quickly overcome) perhaps even enough time to make it through the opposition window before our priority filing deadline passes.
We’ve seen pendency go up to around 9.5 – 10.5 months. It now seems to be lowering, but the progress is slow. If applications aren’t even reviewed for 6 months or more, it’s impossible to wait to file Madrid applications until we know what happens on review (and possibly in the opposition window) while still claiming that priority date. Mark owners either make a risky financial bet to get the priority date, or err on the side of caution and lose the benefit of the priority filing date.
Even beyond 2027, it’s not looking great. The USPTO projects pendency of 4.9 months in Fiscal Year 2029 – in which case priority filing dates could be claimed after applications are approved on first review or refused due only to minor issues (though there’s always the risk of a new grounds for refusal later), but not before the opposition window was cleared.
In short, the USPTO’s long pendency creates problems for U.S.-based mark owners who want to access the Madrid filing system and claim their priority dates but who also want a little bit of security before doing that . . . and by the USPTO’s own estimates, there won’t be any meaningful change to that situation in the next 5 years or so.
The second interesting tidbit relates to Letters of Protest. As mentioned above, these are a great and much lower-cost alternative to filing an opposition if you can get them filed before the window for doing so expires. These are an underutilized tool, but they are becoming more popular. The USPTO reports that only about 2,300 were filed in Fiscal Year 2016, while almost 4,000 were filed in Fiscal Year 2023.
But they still seem to be pretty misunderstood. Apparently, some 31% of the Letters of Protest reviewed in 2022 did not comply with § 2.149 (and so were not included in the record of examination). Only about 27% of the applications corresponding to those Letters of Protest that did meet the requirements and were included in the record were refused by Examining Attorneys on the grounds suggested in the Letter of Protest. I’m really surprised by that number. My own success rate is much higher.
The strangest thing from this section of the Final Rule is the USPTO’s claim that “Examining attorneys likely would have issued a refusal in these cases even without a letter of protest. The USPTO identified only 27 (0.59%) letters in FY 2022 that corresponded to an error in publishing a mark for opposition, similar to historical shares of letters decided each year.”
Hmmm. Not sure that’s the correct metric, and I would love to see the research and reasoning behind that. Not every likelihood of confusion analysis has a clear, 100% correct outcome, and a clear 100% incorrect outcome. There is a substantial gray area in many applications. A good Letter of Protest may be able to push an Examining Attorney who’s on the fence over to your side.
Even if we accept that this is the correct metric, if each year, only about 0.59% of Letters of Protest correspond to an error in publishing a mark for opposition, I’m shocked because I submitted one last year and another this year that very definitely fit that exact criteria (clear error in publishing the other party’s mark, clear error in issuing a prior pending application notice to my clients, all due to errors made in comparing actual filing dates and effective filing dates, and I honestly think that has to do with the relatively new search system making it harder for Examining Attorneys to view the effective filing dates – back when I worked there, it was clear in the old search system, XSearch, what the effective filing date was). Am I two years in a row in that tiny 0.59%? Let's consider the alternative explanation: there’s a flaw in the USPTO’s assessment here, their Examining Attorneys are making mistakes more often than the USPTO is aware (no disrespect, we’re all human), and Letters of Protest are making a bigger difference than the USPTO realizes or acknowledges.
This information was posted on November 23, 2024 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.
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