Legal Update

The U.S. Patent & Trademark Office (USPTO) has finalized new fees for trademark applications and renewals. These fee increases vary by type of submission, but these changes may impact strategic considerations for trademark filings.

On January 18, 2025, the following fees will increase:

Application and Application-Related Fees:

• Base Application: $350 per class
• World Intellectual Property Organization (WIPO) (66(a)) Application: $600 per class, up from $500 (20% increase)
• WIPO (66(a)) Designation Fee: $600 per class, up from $500 (20% increase)

The Base Application is a switch from the previous two forms: the TEAS Standard Application ($350) and the TEAS Plus Application ($250). Now, all applicants will file the Base Application ($350), with add-on fees for incomplete applications and applications containing custom identifications of goods and services that are not limited to the USPTO's list of pre-approved goods and services:

• Insufficient Information: $100 per class
• Custom Descriptions: $200 per class
  • Custom Descriptions exceeding 1,000 characters: additional $200 per affected class for each group of 1,000 characters beyond the first 1,000 characters (this fee will not apply to WIPO (66(a)) applications for now)

For example, an application filed in the United States under Section 1 or Section 44 that identifies one class of goods and services with custom descriptions comprising 1,200 characters will cost $750 (a $400 increase).

Intent to Use Applications:

An "Intent to Use" trademark application is filed when a business plans to use a trademark in the future but hasn't started using it yet. This allows the applicant to secure rights to the trademark before it's in use. The USPTO is increasing the following related fees for statements of use after filing an intent to use application:

• Amendment to Allege Use (filed before the application is approved): $150, up from $100 (50% increase)
• Statement of Use (filed after the application is approved): $150, up from $100 (50% increase)

Post-Registration Maintenance Fees:

• Section 9 Renewal: $325 per class, up from $300 (8% increase)
• Section 8 Declaration of Use: $325 per class, up from $225 (44% increase)
• Section 15 (incontestability) Declaration: $250 per class, up from $200 (25% increase)
• Section 71 Declaration (for WIPO-based registrations): $325 per class, up from $225 (44% increase)
• WIPO Renewal Fee (filing through WIPO, not USPTO): $325 per class, up from $300 (8% increase) (effective February 18, 2025)

A Section 8 Declaration is filed between the 5th and 6th year after registration to confirm that the trademark is still in use, and then every 10 years thereafter, along with a Section 9 Renewal to maintain the trademark registration. A Section 15 Declaration is also filed between the 5th and 6th year after registration to give the trademark incontestable status, which gives the mark stronger protection. A combined Section 8 & 15 Declaration filed between the 5th and 6th year after registration will now cost $575 per class (up from $425). A combined Section 8 & 9 renewal filed every 10 years after registration will now cost $650 per class (up from $525).

Petitions and Letters of Protest:

• Letter of Protest: $150, up from $50 (200% increase)
• Petition to the Director: $400, up from $250 (60% increase)
• Petition to Revive an Application: $250, up from $150 (67% increase)

To minimize the impact of fee increases, clients with unsubmitted applications and renewals should consider prioritizing submission of those forms before the new fee structure takes effect on January 18, 2025.

If your company is looking to pursue trademark protection or needs further advice on these changes, the IP team at Morris, Manning & Martin LLP can help you strategically draft your application to avoid excess class fees and explore filing strategies that maximize protection while minimizing costs.