[co-author: Sarah Chemli]

On May 8, 2023, the USPTO announced its preliminary proposal to adjust its schedule of trademark fees, which was last modified January 2, 2021.[i] The USPTO states that the existing fee schedule does not allow for enough revenue because of (1) the change in both applicant filing behaviors and trademark demand, and (2) market inflation increasing aggregate costs.[ii] The USPTO anticipates that the fee changes would be implemented in November 2024 following a public comment period.[iii]

This proposal affects six categories of trademark prosecution fees:[iv]

• Applications
• Fees related to intent-to-use filings
  • These include statements of use, extensions to file a statement of use (of which five are permitted), as well as amendments to allege use.
• Letters of protest
• Maintenance filings
  • These include declarations of use, declarations of incontestability, and renewals.
• Petitions to the Director
• Petitions to revive abandoned applications

The most significant proposed changes are the additional application fees, the increased intent-to-use fees, and the substantially increased letter of protest fees. With applications, the USPTO proposes not only to discontinue the current two-tiered application structure in favor of a single fee at a higher amount, but to add two sets of extra fees for each class.[v] The first additional fee would be for the ability to add a “free form” goods and services listing.[vi] The second fee would apply to identifications of goods and services over 1,000 characters.[vii]

For intent-to-use filings, the USPTO proposes a two-tier structure for extensions of time to file a statement of use.[viii] The first tier, which covers the first to third extensions, will remain unchanged.[ix] However, the USPTO proposed a $125 or 100% increase in cost for the fourth and fifth (final) extension.[x] Amendments to allege use will incur a proposed 100% increase in cost of $100.[xi]

Additionally, the proposed fee change for letters of protest is significant, at 400%, with a $200 increase.[xii]

This proposed fee structure change could have a significant impact. Budget-conscious filers may need to reconsider trademark filing approaches or increase their budget for trademark matters.

Potential filers should also be more careful in their trademark application filings. This may include a more prudent selection of goods and services and a reduction in extension filings.

After consideration of public comments, both written submissions and those from a hearing held on June 5, 2023, the USPTO will publish its proposed fees in the Federal Register with a Notice of Proposed Rulemaking in the first Quarter of 2024, after which a public comment period will follow.[xiii]

[i] Trademark Fee Adjustment, 85 Fed. Reg. 73,197 (Nov. 17, 2020) (to be codified at 37 C.F.R. pts. 2, 7) https://www.govinfo.gov/content/pkg/FR-2020-11-17/pdf/2020-25222.pdf.

[ii] USPTO, Trademark Fee Proposal Exec. Summary, USPTO, Jun. 2023, at 6, https://view.officeapps.live.com/op/view.aspx?src=https%3A%2F%2Fwww.uspto.gov%2Fsites%2Fdefault%2Ffiles%2Fdocuments%2FTrademark-Fee-Proposal-Executive-Summary-PH2023.pptx&wdOrigin=BROWSELINK.

[iii] Id. at 27.

[iv] Id. at 8.

[v] Id. at 9–10.

[vi] Id. at 12.

[vii] Id. at 13.

[viii] Id. at 17.

[ix] Id.

[x] Id.

[xi] Id. at 16.

[xii] Id. at 23.

[xiii] USPTO at 27. See also, Trademark Pub. Advisory Comm. Public Hearing on the Proposed Trademark Fee Schedule, 88 Fed. Reg. 25,623 (Apr. 27, 2023). https://www.federalregister.gov/documents/2023/04/27/2023-08906/trademark-public-advisory-committee-public-hearing-on-the-proposed-trademark-fee-schedule