Member Article

On November 15, 2024, the U.S. Trademark Office issued a final rule that will not only cost trademark owners more in 2025, but also change the way applications are filed going forward. The new rules and fees are set to go into effect on January 18, 2025, (except for the new Section 66 filing fee, which does not go into effect until February 18, 2025). In this alert, we share the three things you need to know, along with responsive strategies to implement right away. 

1) File renewals and Statements of Use Prior to January 18, 2025 to avoid the new and higher filings fees.

The Trademark Office is set to raise, and has even created new fees, that will apply at all stages of prosecution and registration. In setting the new fees, one notable change is that the Trademark Office has eliminated the TEAS Standard and TEAS Plus Applications, which offered two options for filing. Instead, there is a cost based on the filing basis for the application.  A chart detailing the increases and new fees is set forth below:

Given these increases, some of them substantial, we recommend reviewing your upcoming 2025 deadlines and making any filings possible before January 18, 2025 to save money in the coming year.  

2) Review your identifications of goods and services to avoid new surcharges for lengthy descriptions.

One of the most noticeable changes you may have seen in the chart is the new surcharge imposed when applicants want to write in their own descriptions, as opposed to using a description from the ID manual. Not only is there a $200 surcharge for the opportunity to write in your own identifications of goods and services, but the Trademark Office is clearly cracking down on lengthy descriptions by imposing an additional $200 if you go over 1,000 characters (which includes spaces and punctuation.). This will apply even if the description entered into that box is identical to language that appears in the ID Manual.

If the ID Manual listings are used, the $200 surcharge will generally not be triggered, except in situations where an applicant is clearly abusing the system. For example, using an open-ended listing like “clothing, namely …” to list “clothing, namely, t-shirts and drift bikes” would incur the fee, even though the ID Manual listing was used, since drift bikes are obviously not clothing. Similarly, leaving the open-ended listing blank (i.e., not providing details) will trigger the fee, as will simply repeating the broad heading (i.e., clothing, namely, clothing). The fee should not be triggered, however, if the clarifying wording includes items in the wrong class (“headwear, namely, football helmets”), includes indefinite language (“maternity clothing, namely, sportswear”) or is inaccurate.

The good news is that the surcharge should not apply if you hit the limit in response to an Office Action during prosecution or because you used something from the ID Manual. 

The Trademark Office updates the ID Manual weekly and submissions can be made through a straightforward process.  We recommend exploring any broad filings you want to make in 2025 now and separately trying to get a new ID approved for any planned filings you have in 2025 before filing, particularly if it is a term commonly used in the industry that has not yet made it to the manual.  

3) Prepare strategies to address the new $100 per class “Surcharge Fee” for “incomplete” or “missing” information in applications.

In addition to the higher filing fees, the Trademark Office has created $100 “surcharge fees” that will apply to applications based on Section 1 (i.e. when you are actively using the mark in the United States or have an intent to use the mark in the United States) or Section 44 (based on a foreign filed application). It does not apply where you are filing based on Section 66 (based on a foreign registration). 

For the impacted applications, if any of the following pieces of information are missing or incomplete, a $100 fee will be charged per Class of goods and services listed in the application (note that some categories below cover multiple pieces of information, each of which may trigger its own deficiency fee if missing):

• The Applicant’s name, domicile address, citizenship or state or country of organization and legal entity, along with all information required for certain types of organizations;
• A filing fee for each class of goods and/or services, and for use-based applications, a specimen showing use of the mark as depicted in the application for each class of goods and/or services;
• For graphical or stylized marks, a digitized image of the mark (showing color if the mark includes color) and a description of the mark, including a statement naming the color(s) and describing where the color(s) appears on the mark and a claim that the color(s) is a feature of the mark;
• For marks with non-English wording or non-Latin characters, an English translation or transliteration of that wording or characters;
• For marks that include an individual’s name or likeness, either (1) a statement that identifies the living individual whose name or likeness the mark comprises and written consent of the individual, or (2) a statement that the name or likeness does not identify a living individual;
• If the applicant owns one or more registrations for the same mark, and the owner(s) last listed in Office records of the prior registration(s) for the same mark differs from the owner(s) listed in the application, a claim of ownership of the registration(s) identified by the registration number(s); and
• A designation of a U.S. attorney as the applicant’s representative (including the attorney’s name, postal address, email address and bar information), if the applicant is not domiciled within the United States or its territories.

The “per Class” surcharge can get expensive quickly. The Trademark Office uses a system where goods and services are divided into about 50 different Classes or categories, and a filing fee must be paid for each Class. The US Trademark Office has primarily used these Classes to calculate filing fees and now they will be used to calculate surcharge fees. For instance, if your application covers entertainment services, clothing and jewelry, it spans three Classes. This means that each surcharge for the reasons mentioned above will result in an additional $300 payable to the Trademark Office.

Frustratingly, there is no formal appeal process to contest whether information provided in an application is deemed “sufficient” to avoid the fee. The response to comments suggested taking the issue with the examiner or the supervising attorney, but does not provide a further remedy or course of action if they hold the line. Further, given that Petitions to the Director are also increasing in cost, it may not be financially sound to try to petition for relief rather than pay the fee.

The absence of a formal process and the associated costs are especially concerning due to certain categories that can trigger the surcharge. These categories in particular are expected to have a significant impact on filing strategies after January 18, 2025. We have addressed each one below with recommended strategies. 

Filing Fees:  

In some cases, there were previous advantages to including a variety of goods and services that may fall into different Classes in a single Class at filing, particularly if it was not clear which Class or Classes certain items would ultimately belong.  Once the Trademark Office determined what Classes were involved, you could then opt to pay the additional filing fees to include those additional Classes.  The new rules make clear that following this strategy will incur a surcharge fee moving forward.  If you use the free-form text box to describe your goods and services in a single Class and the Trademark Office later determines that those goods or services fall into more than one Class, the fee will be triggered.  Applicants will no longer have the freedom to be overly broad in their descriptions of goods and services, and will instead want to tie themselves more closely to approved identifications.  We recommend filing any applications for extremely broad identifications before the new rules go into effect as anything filed before January 18, 2025 will be reviewed under the “old” rules.

Descriptions of Non-Word Marks:

Although not expressly stated, other comments related to potential insufficient information fee triggers suggest that if the Trademark Office is not satisfied with the description, including a description of the color aspects of a mark, and requires an amendment, the fee will apply. We recommend mirroring descriptions on past applications, where possible, and reviewing your descriptions thoroughly with clients before filing.

English Translations: 

The burden will now be on the trademark owner to identify, before filing, that the mark does not have a meaning in any foreign language. The responses to the comments make clear that if an examiner requires a translation after filing, the fee will be triggered, even if the applicant was unaware that the term had a meaning in a foreign language. The fee will also apply if the translation contains “inappropriate material”, which is, of course, not defined. These same standards apply to non-Latin characters in marks. 

There are already debates over strategy as to how to address the potential surcharge on this basis.  Some recommend including, in a miscellaneous statement, all potential translations you can find online while others recommend including a statement that there is no intended or known translation to Applicant and as such, none should be required. A clear discussion should be had with counsel prior to filing to determine if any potential translations exist and how best to handle them in the application.

Claims of Ownership of Prior Registrations:   

This requirement appears to require identification of prior registrations where the Trademark Office records do not list the most recent owner.  It is unclear whether recording an assignment that is not reflected in the Trademark Office database (i.e., the database still shows the old name) means that you do, or do not, have to comply with this requirement.  The safest practice is to list all prior registrations (or, if space is limited, make sure to cover those where the Trademark Office shows a different owner).

Specimens:

Finally, in a use-based application, if a specimen is found unacceptable because the mark on the specimen is materially different from the mark in the drawing, the fee will be assessed.  Not addressed in the comments is whether the fee would be addressed if the Trademark Office finds that the specimen is unacceptable because it does not show the use of the mark, and therefore either a substitute specimen is required or an amendment to an intent to use basis must be made.  We recommend a closer look at all specimens before filing to avoid this surcharge at all costs. 

If you have questions about the rule changes or costs, or would like to review potential filings that can be made ahead of the January 2025 effective date, please contact the authors of this alert or a Dinsmore trademark attorney.