TradeMark Express: An open letter to the USPTO ----> Please do NOT raise trademark fees. Try a POLICY change instead.

TradeMark Express: An open letter to the USPTO —-> Please do NOT raise trademark fees. Try a POLICY change instead.

Dear TradeMark Express Clients, higher trademark fees should be the last course of action by the USPTO.

They are proposing to dramatically raise their fees on Oct 1, 2024.

Please see details of the proposed USPTO trademark fee increase below, from our application staff. Here’s my comments.

This chart is from an excellent article by attorney Igor Demcak of TramaTM. See:https://www.tramatm.com/blog/category/legal/uspto-trademark-application-approval-rate-era-of-decline.

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If you have a small business, this is the time to have a say. Tell the USPTO what you think.You can submit comments until May 28 via the green “Submit a formal comment” button:https://www.federalregister.gov/documents/2024/03/26/2024-06186/setting-and-adjusting-trademark-fees-during-fiscal-year-2025. This page also offers a full report summary.

Last I heard, the USPTO was the only profitable part of the Federal government. It used to make $5b a year profit. Enough to contribute to the U.S. General Fund. The USPTO was the only US Government Agency to stay open through the 35 day 2018 shutdown from Dec 22, 2018 to Jan 25, 2019. People I talked to at the USPTO at the time personally took pride in staying open. It was a beautiful thing. They were determined to keep their downward time trend stats going for new trademark application processing towards final registration. Their turn around time for new trademark applications had steadily been chipped down from 19 months, when I opened TradeMark Express in 1992, to an amazing 5.5 months before the 2020 Covid 19 Pandemic. Because of such, the USPTO is now at 8.2 months coming down from 11 months in 2021. They call it Pendency.

In 2010 there were 374 Examining Attorneys at the USPTO. They had a workload of 12 trademarks a day. I could not find individual Examining Attorney workload now. I had heard after the Pandemic, that 200 Examining attorneys were added to the USPTO, to bring the total to 600 attorneys. Tonight, I am surprised to find the USPTO has almost 900 Examining Attorneys!

Here’s the recent USPTO Fiscal Year Application Filings (classes) – (https://www.uspto.gov/dashboard/trademarks/). These are the total number of applications including all classes filed on a fiscal year basis to the USPTO.

2021 = 943,928.

2022 = 787,795.

2023 = 737,018.

2024 = 725,460. (Estimated from Q1 =181,365 x4)

In 2020 there was USPTO 48.3% chance of refusal for a new trademark application. In 2016 it was 40.9%. The #1 reason of refusal has always been for Likelihood-of-Confusion issues with prior trademarks pending and registrants. The #2 issue is poorly filed trademark applications with bad specimens, poorly stated goods/services, and merely descriptive marks that simply cannot be trademarked. Frankly, the hard part of every trademark is the Likelihood-of-Confusion issues. It is a fact comprehensive legal research is on the wane over the last 14 years.

As far as I know, there are 3 places to hire for a true comprehensive legal search, Thomson Compumark, Corsearch and TradeMark Express. Top trademark law firms have full time staff who do research like we do, internally. They use a # of legal research databases that are not offered to the public.

In conclusion the issues I am identifying here, are as follows: A) trademark applications dwindling, B) a dramatic increase of USPTO Examining Attorney staff, C) trademark refusals are an abysmal 50/50 of applications and D) proposed highly increased USPTO needed fees are about to happen.

I believe this is all because there is a significant number of increasingly BAD TRADEMARK APPLICATIONS being submitted. Therefore there is more work for USPTO Examining Attorneys to refuse almost half of the trademark applications they receive and to argue with applicants and their overcharging attorneys – who frankly should have submitted better applications in the first place, or not at all. The USPTO labor is soaring at a time trademark attorneys make $300 to $600 an hour in the private sector.

No wonder the USPTO seeks higher fees. But, the trends will continue. Will the USPTO need another fee increase in 2027? The problem – again – is BAD TRADEMARK APPLICATIONS. The USPTO needs to quell the problem, not make it more expensive for the small business owner to afford the opportunity to build wealth by trademarking their business name, logo or slogan.

1)Before 2010 every trademark service and attorney did true COMPREHENSIVE LEGAL RESEARCH for their clients to make sure their proposed trademark was in fact LEGALLY CLEAR, under trademark law.

2)In 2010, that is when the “trademark mill” services came along to file trademarks at greatly reduced fee, because they were just doing the filing. Even at that comparatively simple task, they did not not do a good job.

3)Nowadays in 2024, these “trademark mill” services are now mostly automated AND a segment of so called trademark attorneys are doing the same thing – filing without comprehensive legal research. BTW – a search of TESS, now called Search at the USPTO web site, is a mere preliminary search – NOT a comprehensive Federal trademark search. There are also 1.5 million State trademarks and 25 million Common Law (first use) marks to research too, BTW. (By statue the USPTO cannot research these other 26.5 million marks for applicants. That work was supposed to have been done before filing any trademark.) Small business owners are trusting in a nice web site and accepting a low fee while assuming it is all the same from a GOOD trademark attorney, or a service, (like us), with trademark attorneys. Wrong. Nowhere close. These vultures WANT Office Action refusals, so they can charge more to argue with the USPTO. They could care less that getting a trademark is a major expense for small business. They do not care about their clients. They do not care if it costs more for the USPTO to field their garbage applications.

4)A little mentioned fact is that the small business owner whose trademark application filing IS BEING HURT. First, because some think they have a legally clear mark, when they do not. So instead of being told they need a new name now, and changing the name, they wait 8.2 months for an Office Action refusal. Then maybe another 6 months arguing fruitlessly with the USPTO while paying more in fees. Worse yet, if someone has a State or Common Law rights they have either 5 or 10 years, (arguable), to cease and desist, and or cancel the (by then) trademark “owner”.

This chills the small business owner from being in business or ever filing for another trademark again. They are too afraid to. So, what we have is a job creator, a person investing their life savings into a business – only to be taken advantage of by incompetent, neglectful and unethical trademark mills and attorneys who don’t operate in good faith to handle a trademark RIGHT. Where will small business capitalism and innovation be in 50 years? Is all the intellectual property carnage worth it just to make $49 by a trademark mill or under $900 by an “attorney”. NOTE – It takes 8-10 hours of work to get a successful trademark. Do the math. Does a trademark mill get by making $4.90/hour after paying $5 to Google for the click? Does any attorney work for $90/hour? What about the paid database costs? Do the math. Do the math. Do the math.

5)The butterfly effect. Protect legitimate business from blocked trademark filers who should not have filed in the first place. Their pending application may in effect cause a SIMILAR mark not to ever be filed because they see the pending mark still in process before being refused eventually months later. They may think they are blocked, under trademark law. But, in reality without the expanded rights a trademark application gains, both marks may be far enough away from each other in sound, appearance and meaning to coexist with no problem. Every trademark filing affects other filings, future and past, even while merely pending. If an application should never be filed, then that is a GOOD THING for everyone.

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Polices the USPTOcould do without raising their fees.

MY IDEA IS: The USPTO should take steps to tamp down the flood of time wasting trademark applications for them and bank account busting for trademark applicants. Show care to small business applicants. Help guide them to a clean, first time filing.

Why should everyone pay more because of the scam artists?

A) Make it well known,all over the USPTO web site, to do COMPREHENSIVE LEGAL RESEARCHbefore filing any trademark. Much more is needed than this recent post –https://www.uspto.gov/trademarks/search/comprehensive-clearance-search-similar-trademarks. Too little. Not worded strong enough. Think everywhere.

B) Charge double for any trademark application being filed without COMPREHENSIVE LEGAL RESEARCH.These are the applicants who are driving up USPTO costs. Charge them at the same time you are reminding them they need COMPREHENSIVE LEGAL RESEARCH.

D) Ask for a copy of the legal research they did – at the time of filing a trademark application.It can be submitted confidentially only to the USPTO. Again, this reminds applicants they need COMPREHENSIVE LEGAL RESEARCH. Say right there what the USPTO means when they say COMPREHENSIVE LEGAL RESEARCH. Spell it out.

E) Yes – Refuse any attorney filed trademark application without COMPREHENSIVE LEGAL RESEARCH.Back up the ethics attorneys are supposed to be bound by. Fact. Attorneys are supposed to address the best interests of their clients. If a client refuses to do the research, then the attorney should refuse the client -or- check a box on the trademark application so the USPTO can automatically charge double. I suggest a flashing red light and siren to let them know they are making a mistake for their clients. Why should the USPTO have more expenses in handling a half-baked application? Frankly, everyone who does trademarks – and I mean everyone – all know it is a great risk to file a blind trademark application. It is not a secret. Clients should not be lied to, or have this information omitted. It is not ethical to lie through omission, especially by an attorney whose obligation and duty exists to truly help their clients. That is why a small business owner chooses to pay more for an attorneys in the first place. The USPTO about two years ago change policy for foreign based trademark applicants to hire a USA based trademark attorney to fight fraudulent applications. Required. Same thing.

F) A trademark application check list pop-up on the first page of any trademark application.I suggested this to the USPTO in March verbally and June 2022 in writing:

On 6/26/2022 6:44 PM, TradeMark Express – Urgent Trademark – TM®SM – Chris DeMassa wrote:

4)Yes, I am way too tardy on the suggestion to Charles and Jason on

March 15, 2022 to detailwhat the USPTO could have as a pop up on

the trademark application page. The point is to offer all trademark

applicants the chance to double check what they are doing to avoid

USPTO Office Action refusals. Also, to lessen the workload of the

USPTO so they do not need to hire another 200 Examining Attorneys

in a few years. We passed it around the staff to say the following:

MARK DEPICTION

If your design includes plain text only (letters/words), the exact format will be required to be in use for the life of the trademark.

If your design includes a stylized element (a logo), a black & white image is preferred to claim the design and allow flexibility with the colors. A color image may be used to claim specific colors but requires that the exact colors are used for the life of the mark.

GOODS/SERVICES

USPTO descriptions of goods/services are strongly suggested. Pre-approved descriptions are searchable at theTrademark ID Manual. If the description is unacceptable/unclear, the USPTO will require amendment, and additional fees may apply. Goods/services statements on existing marks cannot be added or broadened at a later date, only deleted or narrowed.

SPECIMENS

Each specimen must prominently display the mark in association with the goods/services. Specimens should be clear and present examples of the mark as a customer would interact with it. Website screenshots must be saved as JPG or PDF and must include the date you took the screenshot and the URL.

For goods, potential specimens includes photos of the goods themselves, labels and tags, packaging, sales displays, website screenshots, and others, any of which clearly and prominently display the mark.

For services, potential specimens include business cards, websites, or advertisements, which would offer a description of the services offered in clear association with the mark.

For more information, please visitSpecimens | USPTO.

USPTO ALERT: PRIOR COMPREHENSIVE RESEARCH– SAVE COSTS AND TIME AND INCREASE LIKELINESS OF A SUCCESSFUL APPLICATION

A comprehensive clearance search includes looking for similarities in sound, appearance, or meaning in the federal trademark, state trademark, and common-law databases.

In the review period in ~8 months after you have filed, the Examining Attorney will conduct a federal trademark search. If there are similarity conflicts with existing marks, the Examining Attorney will issue a refusal, which often results in additional fees or abandonment of the mark. All USPTO filing fees are non-refundable.

Attorneys and trademark research specialists can conduct comprehensive research before you file your application. Finding conflicts before filing can help you avoid common refusals, additional filing fees, and lost months of time, and therefore is more likely to result in a successful trademark application.

“Selecting and protecting your trademark is part of building your business. It’s an investment in the goodwill and reputation of your company, so you want to take the time to do it right.”

Hope this is constructive!

Thank you, Chris DeMassa

TradeMark Express – Since 1992 – Founder – 650-948-0530

Zoom Anytime –https://bit.ly/TradeMarkZoomMeeting

Calendly Meeting –https://calendly.com/tmexpress/15min

LinkedIn –https://www.linkedin.com/in/chrisdemassa/

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Proposed USPTO fee increase details.

Last Tuesday, March 26, the USPTO proposed a fees adjustment for the Fiscal Year 2025 in efforts to provide the Office with sufficient revenue for future operations.This proposal includes increases to the fees of many common filing types, which may negatively impact small business owners in their trademarking endeavors.

The USPTO would like to receive your feedback. Please review the proposed fees adjustments below and submit your feedback to the USPTO directly via theFederal eRulemaking Portalusing docket number PTO-T-2022-0034 by May 28.

You may view the notice from the USPTO (Fee Setting and Adjusting | USPTO) and the issued notice documents (TM Fees Update FY25).

Here is a summary of the adjustments to common filing types:

New applications with pre-approved goods/services statements (under 1000 characters) (TEAS Plus, or equivalent) [see note 1]

Current fee = $250 per class

Proposed Fee = $350 per class

40% increase

USPTO Cost = $373

Costs the USPTO 49% more vs 2022.

New applications with custom goods/services statements (under 1000 characters) (TEAS Standard, or equivalent) [see note 1]

Current Fee = $350 per class

Proposed Fee = $550 per class

57% increase

USPTO Cost = $504

Costs the USPTO 44% more vs 2022.

Statement-of-Use

Current fee = $100 per class

Proposed Fee = $150 per class

50% increase

USPTO Cost = $240

Costs the USPTO 140% more vs 2022.

Petition to revive an application

Current Fee = $150

Proposed Fee = $250

67% increase

USPTO Cost = $94

Costs the USPTO 59% more vs 2022.

Section 9 fee [when not combined with a Section 8], for 10-year renewals

Current Fee = $300 per class

Proposed Fee = $350 per class

17% increase

USPTO Cost = $24

Costs the USPTO 1150% more vs 2022.

Section 8 fee, for 6-year renewals and 10-year renewals

Current fee = $225 per class

Proposed Fee = $300 per class

33% increase

USPTO Cost = $25

Costs the USPTO 800% more vs 2022.

Section 15 fee [when not combined with a Section 8], for 6-year renewals

Current Fee = $200 per class

Proposed Fee = $250 per class

25% increase

USPTO Cost = $25

Costs the USPTO 700% more vs 2022.

Notes:

  1. For new applications, the USPTO currently offers two filing types: TEAS Plus and TEAS Standard. TEAS Plus requirements include the use of pre-approved goods/services statements and has a fee of $250 per class. TEAS Standard allows custom goods/services statements and has a fee of $350 per class. The proposal includes discontinuing the two types and consolidating it into one type. This new type would require pre-approved goods/services statements and statements under 1000 characters. To add custom-drafted statements would be an additional $200 per class, and each additional 1000 characters beyond the first 1000 would be an additional $200.
  2. Some other common filing types, such as Extensions of Time, are not receiving fees adjustments and are not included in this table.

Thank you!

Tyler D.

Trademark Application Specialist

APPLICATIONS DEPARTMENT: (202) 496-1600

MAIN OFFICE: (650) 948-0530

EMAIL:staff@tmexpress.com

Again, if you have a small business, this is the time to have a say. Tell the USPTO what you think.You can submit comments until May 28 via the green “Submit a formal comment” button:https://www.federalregister.gov/documents/2024/03/26/2024-06186/setting-and-adjusting-trademark-fees-during-fiscal-year-2025. This page offers a full report summary.

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Thank you, Chris 650-948-0530

Email –staff@tmexpress.com

Zoom Anytime –https://bit.ly/TradeMarkZoomMeeting

Calendly Meeting –https://calendly.com/tmexpress/15min

Crash Course Trademark Video –https://www.youtube.com/watch?v=3gWaAJR5L18

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