The United States Patent and Trademark Office (“USPTO”) recently announced a proposal to introduce certain new fees and increase some existing fees relating to trademark filings.
Per the USPTO, the new fees and increases are intended to generate additional revenue to combat inflation and rising internal costs due to the growing volume of new trademark filings each year. The proposed fee changes are slated to go into effect November 1, 2024, after a public comment period on the proposal.
The proposed fee changes impact several areas, including new application filing fees, Intent to Use fees and trademark maintenance and renewal fees.
New Application Filing Fees
Current new application filing fees are $250 per International Class for electronically filed applications. USPTO intends to increase that fee to $350 per Class. In addition, USPTO intends to impose an additional $100 fee when goods and services are entered manually rather than by selecting goods and services from USPTO’s own drop-down catalog of acceptable identifications of goods and services. In addition, USPTO will impose a $100 fee for any descriptions of goods or services longer than 1,000 characters.
These new fees could impact trademark applications relating to new technologies or technology applications where the USPTO has no “acceptable” existing description of goods or services. These changes alone could result in doubling the current cost of a new trademark application filing.
Intent to Use Fees
In order to obtain registration of a mark initially filed on the basis of Intent to Use, the applicant must file a Statement of Use demonstrating how the mark is used in commerce within six months following a Notice of Allowance or seek an extension of time to file the Statement of Use. An applicant can obtain up to five six-month extensions of time to file the Statement of Use. Currently, the USPTO fee to electronically file a Statement of Use is $100 per Class of goods. USPTO intends to double that fee to $200. The current fee for an extension of time to show use filed electronically is $125 per Class for each of up to five extension requests. USPTO will not change the $125 extension request fee for the first three extension requests.
However, for the fourth and fifth extensions, USPTO intends to double the filing fee to $250 per Class. While most Intent to Use applicants do not need to take the full five extensions, for those that do, the new fees will result in an almost 40% increase overall.
Maintenance and Renewal Fees
After a trademark registration is issued, the registrant must file a declaration of use between the fifth and sixth years of registration in order to keep the registration active and in force. Further, the registrant must renew the trademark registration before the tenth anniversary of registration and every ten years thereafter to keep the registration active. Right now, the fees associated with filing the six year Declaration of Use and Incontestability is $425, and USPTO intends to increase that fee to $550.
Likewise, the current renewal fees due at the tenth year are $525 per Class, and USPTO intends to increase those fees close to 25% to $650 per Class.
Take-Away
Although the proposed fee increases must still go through a period of public comment and may change before implementation in November 2024, it is clear that at least some fees will be changing at the USPTO. Given this, it behooves businesses or individuals to consider filing trademark applications now to avoid the potential fee increases.
Those needing assistance may contact me at mark.nieds@henlaw.com.