Navigating the 2025 USPTO Trademark Changes
Erik Pelton | December 13, 2024
Erik Pelton launched his trademark law practice in 1999, following a stint as an examiner at the US Patent and Trademark Office. The firm represents clients in all aspects of trademark clearance, registration, maintenance, transactions, and disputes. The firm is particularly experienced in the federal trademark registration process, obtaining more than 4,500 USPTO registrations of behalf of clients, as well as handling scores of proceedings before the Trademark Trial and Appeal Board. Erik also teaches trademark law at Georgetown University Law Center and for four years supervised the trademark clinic at Howard University School of Law. Erik lives in Falls Church, Virginia, where he also provides pro bono work for veteran-owned businesses.
Starting January 18, 2025, the United States Patent and Trademark Office (USPTO) will implement seismic trademark changes including fee increases, new fees, and a new application form. These changes affect trademark attorneys and their clients, requiring adjustments in filing strategies, budgeting, and compliance. This article offers an overview of the key updates and practical tips for attorneys to navigate the new landscape effectively.
The End of TEAS and the Introduction of Trademark Center
One of the most significant changes is the retirement of Trademark Electronic Application System (TEAS) and the introduction of the new Trademark Center. The TEAS system, launched more than two decades ago, will be replaced by the Trademark Center, a modern and efficient platform designed to overcome TEAS’s limitations. The new system provides a markedly better user experience for drafting, sharing, signing, and filing applications, and features a docket as well as automatic saving of drafts. Say goodbye to those unique .obj files!
New Fee Structure and Increases
Another critical change is the new fee structure. TEAS Plus applications, along with their $250 per Class filing fee, have been eliminated. All new applications will now all begin as “Base Applications” with a fee of $350 per class. The rules also introduce three new fees that may apply:
- An additional $100 per class for not meeting specific requirements (previously required for TEAS Plus applications);
- An additional $200 per class penalty when the ID Manual is not used to detail the goods and/or services;
- For applications with lengthy identifications of goods and/or services, an additional $200 for each 1,000 characters beyond the first 1,000.
In addition, international filings under the Madrid Protocol will rise to a base cost of $600 per class, plus the other potential penalties and costs, starting February 18, 2025.
Implications for Attorneys
These changes will have several implications for trademark attorneys. Budgeting for trademark filings will become more complex, as attorneys will need to account for the new fees and potential penalties. Explaining the changes to clients and updating templates and information will be crucial to ensure clients are aware of the new costs and requirements.
Attorneys will likely want to adjust their filing strategies to avoid incurring additional fees when possible. This entails gathering all necessary information for new applications at the outset to minimize penalties. Proactive practitioners are advised to begin planning to:
- Update templates for potential clients concerning the fees and costs associated with filings.
- Develop or refine checklists for clients with new filings to address potential “insufficient information” requirements, including:
- Whether any translation and/or transliteration of words in the mark is required.
- Whether the mark identifies a person, and if so, whether they are living (and obtain written consent if needed).
- The colors present in any design mark, not including black and white.
- Whether a domicile address listing is necessary because the public address provided is not a domicile.
- Whether the Applicant owns any relevant prior registrations (and a complete list if so).
- If Applicant is a domestic partnership or joint venture, a list of the names and citizenships of all partners.
Because of the $200 fee for not using the pre-populated choices for goods and services descriptions, it behooves practitioners to familiarize themselves with the USPTO’s ID Manual as well as the process for suggestion additions to it. In addition, plan to discuss with clients the pros and cons of filing a broader scope in multiple Classes versus a narrower scope with fewer USPTO fees; in the past some decisions about the number of Classes could be deferred until later in the application process but such deferrals will now carry a very steep cost.
In summary, when planning and preparing new applications in the Trademark Center, it is necessary to balance the risk of filing delays due to information gathering against the potential costs of additional USPTO fees that may be incurred if an application is flagged for “insufficient information.”
Practice Tips
To help attorneys navigate these changes as the clock ticks down to midnight on January 17th, several practice tips are recommended:
- Save Client Money on Renewals and Filings Before January 18, 2025: Attorneys should consider filing renewals and statements of use (which increase from $100 to $150 per Class) before the new fees take effect to save on costs.
- Communicate Upcoming Fee Changes to Clients: Given the complexities, it is essential to start planning how to communicate the new application fees and Base Application requirements to clients, especially those accustomed to the TEAS Plus system.
- Practice Using the New Trademark Center: Familiarizing oneself with the new Trademark Center will be crucial for a smooth transition. The new system offers enhanced features, such as automatic saving of drafts to the cloud and better formatting of drafts for email signatures.
- Enhanced Checklists for Clients: Attorneys should consider creating enhanced checklists for clients to ensure all necessary information is gathered upfront. This includes translations, disclaimers, domicile addresses, and statements regarding the name or likeness of living individuals.
Final Thoughts
The 2025 USPTO changes represent a tectonic shift in the trademark filing process. Those who proactively study the changes and implement the suggested best practices will be well-equipped to maintain a high standard of service for their clients.
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