The new year will bring big changes to how U.S. trademark applications are filed. Based on a USPTO final rule that will take effect on January 18, 2025, trademark applicants will see increases in many USPTO fees, including several completely new “surcharge” fees that will be assessed at the time filing. The new fees are designed to encourage applicants to make choices that streamline the examination process. Unfortunately, the surcharges will lead to difficulty in ascertaining the cost of filing an application until the details of the application can be studied, or the application is filed.

Most consequentially, the new system levies surcharges against applicants who need to adopt unique descriptions of goods and services, whether to avoid a possible citation, claim priority, or adhere to the terms of an existing settlement agreement. In addition, applicants working in fields with emerging technologies or inventing their own products will also have difficulty avoiding the new surcharge.

Fee Increases at the time of Application

The new rule changes the base cost of an application filed directly with the USPTO to $350, and retires the option to file via the TEAS Plus form at a cost of $250 per class. The per class application fee to file via the Madrid Protocol for foreign applicants is rising from $500 to $600 per class.

However, the new base application fee is only the first part of the story. The USPTO’s Final Rule allows the Office to levy three completely new surcharge fees, consisting of: the “Insufficient Information Surcharge Fee,” the “Free-Form Text Box” fee which is charged to applicants who do go outside the USPTO’s Acceptable ID Manual, and the “1,000 Character Limit” surcharge fee. Each class included in each new application filed on or after Jan. 18, 2025, faces the possibility of having all three surcharges applied. However, none of these surcharges will be levied (for the time being) against Madrid Protocol applicants, though the Final Rule indicates that it is the USPTO’s desire to levy these charges when the WIPO electronic filing technology allows for it.

• Insufficient Information Surcharge

The first fee, known as the Insufficient Information Surcharge fee, will cost applicants $100 per class included in the application. It is the easiest surcharge to avoid but will be levied if the applicant does not include enough information in each of thirteen categories that the Trademark Office deems to be necessary at the time of application. Examples of necessary information include: Owner information, owner domicile address information, the state of incorporation and the applicant’s type of entity.

Also in this list is a requirement to translate any material in the mark that might be a foreign language into English. Based on our previous filing experience, the Office sometimes will make a determination that a fanciful trademark with no meaning to the applicant other than as a mark may actually be a lesser-known word in, let’s say, the Estonian language. If such a determination occurs, the Applicant may be changed a $100 surcharge for failing to include the translation of what it perceived to be a fanciful mark from Estonian to English. Under the new rule an intrepid applicant might benefit from use of translation software with auto-detection capability to determine if the fanciful mark has a meaning in a foreign language. The applicant can then make the determination at the time of filing whether such the translation should be entered into the record.

“Free-form text box” Surcharge

The second, but most impactful new surcharge, is a $200 per class fee to use the “free-form text box” to describe an Applicant’s goods or services. In order to avoid this fee an Applicant must exclusively use the pre-approved listing of goods and services contained in the USPTO’s Acceptable ID (identification) Manual. The Acceptable ID Manual is a searchable list available for review on the Trademark Office website.

The USPTO admits that “the ID Manual is not intended as an exhaustive list of goods and services for which an applicant may seek registration.” In fact, the Office says, “[n]o listing could include all possible identifications for the multitude of products and services for which marks may be registered.” Nevertheless, an applicant that cannot find a description in the Manual that suits its purposes must pay a $200 surcharge to submit a “free form” description.

Under the current system, submitting an application using descriptions contained in the Acceptable ID Manual is preferable but in many cases is neither possible nor advisable. The Acceptable ID Manual is most useful when an Applicant sells consumer goods, like food, drink, clothing, sporting goods, bags, jewelry, cosmetics, and other sundries. The Manual has a fairly robust list in these categories of products that an Applicant can choose from. However, when an Applicant deals not in consumer goods, but in services or in goods that involve technology or specialized buyers, the Acceptable ID Manual often lacks in the descriptions that fairly and completely match a particular applicant’s goods or services.

One reason an applicant may wish to craft a unique description via the free-form text box is to increase the chance that an already registered mark will not be cited against the application for being confusingly similar. In some classes the register is so crowded that even small differences in the description of the goods and services will be determinative as to whether a citation is made by the Examiner. Any unique descriptions that is adopted in any class by use of the “free-form text box” will trigger the $200 per class surcharge.

Applicants who have reached settlement agreements with other parties that require either unique language, or the inclusion of a “none of the aforesaid” clause must use the “free-form text box” and must pay the surcharge. So too must Applicants using an already drafted description of goods and services used in another country who are claiming priority. Unless all of the existing descriptions can be found in the Acceptable ID Manual, these applicants may also need to bite the bullet and pay an additional $200 per class.

Character Limit Surcharge

Finally, the USPTO will levy a $200 per class surcharge for descriptions of goods or services that exceed 1,000 characters, including spaces and punctuation marks. In fact, each additional 1,000 characters after the first 1,000 will incur additional surcharges. This fee will not be assessed if all of the description is included in the Acceptable ID Manual. However, that would be statistically unlikely. More likely is the scenario where a description of goods in one class that contains 4,000 characters will result in a filing cost of (1) the $350 base filing fee, plus (2) the $200 “Free-form text box fee,” plus (3) the $600 in surcharges to exceeding the character limit by 3,000 characters. The total Application cost for this one class would equal $1,150.

The Office explains the addition of this fee because descriptions of goods and services that contain over 1,000 characters result in longer examination time to review as to likelihood of confusion and acceptability as to the way in which the goods are worded. Thus, the Office is trying to right-size the fee to the burden imposed by a particularly lengthy application.

Applicants based in Europe or Japan who are used to including voluminous descriptions in their home trademark registrations should take note and either pare down the descriptions to the most important goods and services that can be described in under 1,000 characters or file in the USPTO via the Madrid Protocol.

Difficulties posed by the new surcharges

Unfortunately, the new rule will make it difficult to provide an applicant with an accurate cost quote without first reviewing the description of goods or services to see if the Acceptable ID Manual can be utilized or first doing a character count. For this reason, attorneys for foreign applicants who value knowing the upfront cost may determine that applications should be filed in the U.S. solely via the Madrid Protocol when available.

In addition, the new rule will put a premium on using unique descriptions of goods and services and may lead an applicant to choose one or more of the Acceptable ID Manual’s most broadly worded descriptions rather than something more narrow. For example, the Acceptable ID Manual includes the service description, “scientific research and development;” but many applicants in the R&D space eschew this description for something more tailored to their particular scientific field. If more applicants adopt simply “scientific research and development” the rate of likelihood of confusion refusals is bound to rise.

One potential strategy to avoid this, and the “free-form text box” surcharge, is to try to pre-clear a unique description by lobbying for its inclusion in the Acceptable ID Manual. However, the Office frequently refuses such suggestions. Further, since priority is often determined by the date of filing, trying to pre-clear an entry into the Acceptable ID Manual may cause delay of filing an application by two to four weeks. Nonetheless, if an applicant is likely to use a description in more than one application and over a period of time, pre-clearing it for future filings is a good use of time.

Other Fee Increases

In addition to increasing the fees at the time of application, the USPTO has also adopted the increases shown in the chart below. Thankfully these fee increases are not likely to change the overall strategy associated with renewal or petitioning the Office, but they will come at an increased cost to applicants and registrants.