USPTO Proposes New Fee Schedule for Trademark Applications

Overview

On March 26, 2024, the U.S. Patent and Trademark Office (“USPTO”) issued a notice of proposed rulemaking to increase fees for many types of trademark filings. The proposal is subject to public comments, and the subsequent Final Rule is set to go into effect on November 15, 2024, the start of the USPTO’s next fiscal year.

The proposed fee changes include:

Application filing fees
1. Eliminating the TEAS Plus and TEAS Standard distinction.
2. Replacing TEAS with a basic filing fee of $350 per class.
3. Discontinuing the $500 per-class filing fee for extensions of protection from International Applications and replacing it with the standard $350 per class basic application fee.
4. New surcharge for free-form text identifications, not taken from the ID manual, of $200 per class.
5. A new surcharge for “incomplete” applications of $100 per class.
6. A new surcharge for free-form identifications over 1,000 characters of $200 for each additional 1,000 characters, per affected class.
Intent to use application fee increases:
1. Amendment to Allege Use and Statement of Use fee increase from $100 to $150 per class.
Letter of Protest fee increases from $50 to $250.
Petition to Director fee increases from $250 to $400.

The USPTO’s rationale for the fee structure includes four objectives: recoup the costs of processing applications and other filings, encourage applicants to file more “complete” applications, recoup costs for IT improvements, and reduce pendency.

The USPTO responded to commenter criticism by including a detailed list of information that, when missing from an application, would render the application “incomplete.” This includes information such as applicant’s domicile address, legal entity type, a signature on the application, and an acceptable identification of goods.

Ultimately, the USPTO’s intentions are good: to increase efficiency of examination and to encourage accurate and complete trademark filings. However, effecting these intentions with surcharges and other fee increases creates a system that is more complex and less user friendly. Once implemented, trademark practitioners will need to reset client expectations on fees and prepare clients for the possibility of unexpected surcharges and fee increases as applications are examined under the new fee schedule.

Professionals

Key Takeaways

The proposed fee structure increases trademark filing fees and creates a series of possible surcharges, creating more complexity when filing trademark applications.

Initial Application filing fees increase for standard applications. The USPTO’s proposed changes will increase the initial application fees for what was known as TEAS Plus to the current fee under TEAS Standard. The TEAS Plus filing fee was $250 per class if applicants used pre-approved identification language. The new basic filing fee of $350 per class covers this exact type of application for $100 more per class. The TEAS Standard filing fee of $350 per class for free-form identification now increases to $550 per class when adding the basic filing fee ($350) and the free form surcharge ($200).
The new surcharges add complexity to initial applications and prosecution. Under the proposed fee structure, per class application fees could range from $350 for a “perfect” application to as much as $850 or more if an applicant utilizes a free-form identification with 1,000+ characters and inadvertently omits information. There are multiple different combinations of surcharge fees that could apply to every application, although Applicants may not know what surcharges apply until the application is examined months later.
Applicants and the practitioners advising them will need to be diligent to avoid surcharges. It is essential that Applicants provide information about mark translations, alternate meanings, and correct address information, among other elements required in an initial application, to avoid potential surcharges. It is unclear if these new surcharges will be applied to applications filed only after November 15, 2024, or will be applied retroactively to applications filed before then, given the long examination pendency at the PTO.
The requirements apply to all application types, including those filed under the Madrid System, even though some of the required information is incompatible with Madrid-based filings. For example, an applicant cannot submit a consent to use of a living person’s name or likeness through WIPO. Likewise, 37 C.F.R. 2.22(a)(19) would require an applicant domiciled outside the U.S. to designate a U.S. attorney as its representative, although there is no section for designating a U.S. attorney in a request for extension of protection. If the rule is applied literally, every extension of protection will be subject to a surcharge.
Applicants should be diligent and work closely with their counsel when preparing new applications. Applicants can create some sense of confidence in this new filing system by working closely with their trademark counsel to draft applications that meet the USPTO’s high standards.

USPTO Proposes New Fee Schedule for Trademark Applications

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Matthew Frisbee

Audrey Trace