Every month, Erise’s trademark attorneys review the latest developments at the U.S. Patent and Trademark Office, in the courts, and across the corporate world to bring you the stories that you should know about.
USPTO Trademark Filing Fees Set to Increase in January 2025
Effective January 18, 2025, the U.S. Patent and Trademark Office is increasing trademark application and other fees. As noted in the introduction to the final rule implementing the fee changes, the USPTO is adjusting or adding 28 fees and discontinuing four.
Application fees
The new fee schedule eliminates TEAS Standard and TEAS Plus applications and instead creates a single electronic base application with a filing fee of $350 per class, which is the current TEAS Standard filing fee.
The USPTO is instituting new additions to the base filing fee for applications based on use and intent-to-use (Section 1) and foreign registration and application (Section 44). These include:
- $100 filing fee per class for filing with insufficient information,
- $200 per class for entering goods and services in free-form text rather than selecting good/services from the Acceptable Identification of Goods and Services Manual (ID Manual),
- and $200 per class for each additional group of 1,000 characters over the first 1,000 characters,
The cost of paper filing increased by $100, to $850 per class. There are, however, very limited circumstances in which an applicant may file on paper rather than electronically, such as for specimens of non-traditional marks.
All statements of use and amendments to allege use will increase by $50 per class, regardless of manner of filing (paper or electronic).
In addition, the USPTO processing fee for filing an application or subsequent designation to the World Intellectual Property Organization under the Madrid Protocol increased from $500 to $600 per class, payable to WIPO in Swiss Francs. Madrid applicants should check the Madrid System Fee Calculator on WIPO’s website for total filing fees, including the USPTO’s and WIPO’s fees.
Maintenance fees
Maintenance and renewal fees also have increased, with fees for filings like statements of continued use and incontestability up anywhere from $25 to $100 per class. When calculating fees for these types of filings bear in mind that these fees are often combined, such as in a combined Section 8 declaration of continued use and Section 9 renewal, each with its own filing fee.
For more fee information, see the USPTO’s summary of 2025 trademark fee changes.
USPTO financials
According to the final rule announcement, the USPTO expects its annual trademark operations to cost $594 million in fiscal year 2025. It anticipates around 774,000 applications for the year, a growth rate of around 4.6%.
The USPTO also projects a decrease in application pendency time over the next five years.
If the decreased pendency comes to fruition, that’s good news for applicants and their attorneys, who have seen unusually high pendency in recent years. “The agency’s recent trademark pendency challenge is the result of several years of sustained increases in trademark application filings punctuated by an unprecedented, year-long influx during FY 2021 that created a significant increase in unexamined inventory. The agency is working diligently to balance timely examination with trademark quality. Improvements include the deployment of a new browser-based, end-to-end examination system (TM Exam) designed to improve examination quality and efficiency and establishment of a dedicated Trademark Academy to improve the training experience for new examiners,” the final rule announcement noted.
Do “Defendant’s Profits” Include Affiliates’ Profits? Supreme Court Weighs Damages Award
The U.S. Supreme Court recently heard oral argument on the extent to which the Lanham Act permits disgorgement of profits from an affiliated company of the alleged infringer that was not named in the infringement lawsuit.
On December 11, the court considered Dewberry Group, Inc. v. Dewberry Engineers, Inc., the culmination of a longstanding dispute between two companies using a DEWBERRY mark for services related to real estate development.
In 2007, the parties entered into a settlement agreement governing their use of DEWBERRY marks. According to a USPTO filing by Dewberry Group, the agreement “allowed the parties to use their respective marks, DEWBERRY CAPITAL and DEWBERRY, throughout the United States, with only minor limitations.” On the other hand, Dewberry Engineers stated in its brief before the Supreme Court that the agreement “permitted [Dewberry Engineers] to use any ‘Dewberry’ mark it wished, anywhere it pleased” and “allowed [Dewberry Group] only one ‘Dewberry’ mark (‘Dewberry Capital’) for certain services in certain geographic areas with a distinguishing column/capital logo.”
The current suit arises from a rebrand around 2017 from Dewberry Capital to Dewberry Group. In 2020, Dewberry Engineers sued Dewberry Group in the Eastern District of Virginia. The district court entered summary judgment in favor of Dewberry Engineers on its claims of trademark infringement and breach of the settlement agreement. In a bench trial on damages, the court awarded nearly $43 million in disgorgement of Dewberry Group’s profits, calculated from the revenues of its affiliated companies. The U.S. Court of Appeals for the Fourth Circuit upheld the damages award, among other holdings.
The Lanham Act provides for recovery of damages, in part as follows:
When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office … shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. … In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount. If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case. …
15 U.S.C. § 1117(a) (emphasis added).
In its brief before the Supreme Court, Dewberry Group argued that the disgorgement of “defendant’s profits” should not include profits of affiliated entities. On the other hand, Dewberry Engineering’s brief focused on the court’s discretion to “enter judgment for such sum as the court shall find to be just.” It argued that the court calculated the sum, including affiliates’ revenues, as Dewberry Group’s “true financial gain” from infringement.
In questioning Dewberry Group’s counsel on argument, Justice Ketanji Brown Jackson seemed to express concern “that we do have a constellation of entities all owned by the same individual. The others are profiting. So it is just the structure of this financial arrangement that is avoiding the ability for recovery under the Lanham Act.”
The U.S. Solicitor General’s Office also filed an amicus brief and presented the government’s position on oral argument. At oral argument, Assistant to the Solicitor General Nicholas Crown argued that the award should be vacated because “the courts below treated Petitioner and its affiliates as a single corporate entity and then pooled their combined profits and affirmatively disclaimed relying on veil-piercing principles.” However, he also stated that equitable principles should address a situation “like we may have here, where a defendant is disguising economic reality.”
During Dewberry Engineering’s portion of the argument, Justice Clarence Thomas questioned why Dewberry Engineering didn’t simply sue all of Dewberry Group’s affiliates. Other justices questioned Dewberry Engineering’s counsel on the tension between relying on the “just sums” portion of the damages statute and recognizing the corporate form.
Other Marks in the News:
