The Trademark Office is increasing its filing fees and adding some new ones. At Kaufman and Kahn, we generally let people know many months before their renewals are due — but now is the time to file any new application or to file any fifth-year or 10th-year renewals if they are ripe for renewal. (A declaration of use is filed between the fifth and sixth anniversary of the date the trademark was registered. The 10th-year renewal is due between the ninth and 10th anniversary of registration.)
In its statement dated December 15, 2024, the USPTO said that in anticipation of the costs to address the hundreds of thousands of applications they expect to receive next year, the Office is increasing its fees accordingly. These changes include the following:
•Application fees are presently either $250 or $350. The USPTO has done away with the $250 fee; every application will be $350 for each trademark in each class.
•There’s a new fee for “insufficient information” including any failure to provide a translation of the applied-for mark. The new fee is $100 per class, per mark. Practitioners are concerned because a client can come up with what we all think is an entirely invented word, but the examining attorney might search online and find that there are other ways the invented word can be translated — even in obscure languages that aren’t spoken very much in the United States.
•Another $100 increase is for Madrid Protocol filings. We use the Madrid Protocol to file in other countries a client’s U.S.-based applications or registrations. (The USPTO then sends these international applications to WIPO (the World Intellectual Property Organization)). The USPTO will charge $600 per class on top of the filing fee that each country’s IP office may charge.
•A new fee for using the free-form text box will be $200 per class. We use free-form text when a client has goods or services that don’t fit within the predefined categories that the Trademark Office has approved, and instead describe the goods/services in the client’s own words. (Sometimes clients have us file based on their applications or registrations from outside the U.S., and they want to use the exact wording of the original application for the sake of consistency. We can do it, but now it will cost more — per class.)
•If a client has a long string of words to describe the goods/services for their trademark, there will be a new $200 fee to file more than a thousand characters of text. To some extent, this is a persuasive means to discourage clients from filing for extensive goods and services and attempting to cover everything under the sun in a particular class. However, to avoid this new, per-class fee, the client or overseas counsel may need to engage in some serious editing.
•Note that if/when a registration is audited (often around the time a declaration of use is filed) the USPTO charges a $250 fine per class to delete any goods from the class of goods. That hasn’t changed, but it’s another reason why the client should limit their goods/services to those they are actually using in U.S. commerce.
•To file an amendment to allege use, or to file a statement of use, is going up from $100 to $150 per class.
•Filing a fifth-year declaration of use and incontestability will increase by $150 per class, up to $575 in filing fees alone.
•Similarly, to file a 10th-year renewal application will increase by $125, up to $650 in filing fees.
The bottom line is that now is the time to file or renew a trademark before these fees take effect in mid-January. Clients who have trademarks that are ripe for renewal with a deadline “far away” in next year should instead renew this year. Contact us if you want to further discuss your particular needs.
