Author: Sara Rodriguez

Trademarks made easier at the ITC?

Post author By Sara Rodriguez
Post date March 13, 2025

The U.S. International Trade Commission (ITC) offers broad injunctive relief against imports that violate patents, trademarks and copyrights. Unlike injunctions in district courts, which are against specific parties, ITC in rem “exclusion orders” can exclude infringing imports from any and all sources.

ITC cases have one requirement that cases in federal court don’t–at the ITC, the rights owner must establish a “domestic industry” by proving either a) significant investment in plant and equipment; b) significant employment of labor or capital; or c) substantial investment in its exploitation, including engineering, research and development, or licensing.

Historically, sales, marketing, warehousing, quality control, and distribution activities did not count towards meeting the ITC’s “domestic industry requirement.” That has now changed.

In a recent decision reversing the ITC, the Federal Circuit ruled that when it comes to proving a domestic industry “[T]here is no exclusion… for sales, marketing, warehousing, quality control, or distribution, which are common aspects of providing goods or services.”

The ruling is a significant development in ITC practice. It means that trademark owners should now be able to more easily satisfy the “domestic industry” requirement at the ITC based on common non-manufacturing activities in the U.S., potentially opening the door to another venue besides federal court for enforcing U.S. trademarks against infringing imports.

The case is LASHIFY, INC. v. INTERNATIONAL TRADE COMMISSION. Case:23-1245 03/05/2025

Announcements

Saul Cohen and AJ Schumacher Elected as Kelly IP’s Newest Partners

Post author By Sara Rodriguez
Post date January 13, 2025

Kelly IP is pleased to announce that Saul Cohen and AJ Schumacher have been elected as the firm’s newest partners. Since joining the firm, Saul and AJ have been key contributors to Kelly IP’s continued growth and success.

According to partner David Kelly, “These well-earned promotions reflect our firm’s ongoing commitment to developing and recognizing talented lawyers. From the start, both Saul and AJ impressed us with their insights, hard work, and dedication. The firm proudly welcomes Saul and AJ to the partnership.”

Saul is an experienced litigator who has represented clients in a wide range of matters, including trademark, copyright, false advertising, trade secret, and unfair competition cases. Saul’s practice encompasses all aspects of IP litigation, from pre-litigation investigation and counseling to trial and appeal. He has extensive experience litigating IP cases in trial and appellate courts as well as before the Trademark Trial and Appeal Board, handling briefing and argument on complex legal and procedural issues.

Saul joined Kelly IP after working at a large international law firm and a litigation boutique and began his legal career as a law clerk for Judge Gregg Costa on the U.S. Court of Appeals for the Fifth Circuit. He graduated with honors from the University of Chicago Law School, where he was a member of the University of Chicago Law Review.

AJ’s practice focuses on all aspects of trademark and domain name law, including counseling, prosecution, global portfolio management, enforcement, and disputes before the Trademark Trial and Appeal Board, both in the U.S. and internationally. He also has significant experience handling domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP), as well as crafting global domain name acquisition strategies. AJ has worked with clients of all sizes, from beginning-stage startups to unicorns and Fortune 5 companies, and some of the world’s most famous brands across various fields, such as in professional sports, fashion, beauty, fintech, finance, telehealth, and insurance.

Prior to joining Kelly IP, AJ practiced trademark, copyright, and advertising law with a national Am Law 50 law firm. AJ is a magna cum laude graduate of the Marquette University Law School.

Announcements

USPTO Significantly Changes Application Fee Calculations

Post author By Sara Rodriguez
Post date November 25, 2024

All,
The United States Patent and Trademark Office just announced major changes to the trademark filing fees and increases to other fees effective January 18, 2025 for applications filed under Sections 1 and 44 and February 18, 2025 for applications designated through WIPO. The USPTO will also be increasing fees for other filings discussed in more detail below.

Applications filed under Section 1 and 44

Starting on January 18, 2025, applicants filing trademark applications under Sections 1 and 44 will pay a base application fee of $350 per class and additional surcharge fees under the following circumstances:

$100 surcharge fee per class for applications filed with insufficient information, which includes a long list of information required, such as ID(s) from the USPTO’s Acceptable ID Manual, verified statement, entity information, prior registration information, complete statements about the mark, and more. This requirement is similar to the requirements under the current TEAS Plus application option.
$200 surcharge fee per class for applications that choose the free-form text box instead of choosing descriptions from the Trademark ID Manual; and
$200 surcharge fee per class for each additional group of 1000 characters beyond the first 1000 characters in the description including punctuation and spaces.

The new fee structure eliminates the current TEAS Standard and TEAS Plus fees. This could lead to a significant increase in filing fees for U.S. trademark applications, and unpredictability in filing estimates.

Below are some examples of the base fee plus surcharges for various versions of descriptions in International Class 25

Fee	ID
$350 (assuming sufficient information for the application) Approved description for the Trademark ID Manual No character limit	Apparel for dancers, namely, tee shirts, sweatshirts, pants, leggings, shirts and jackets; nurse’s apparel, namely scrubs; Children's and infants' apparel treated with fire and heat retardants, namely, jumper coveralls, overall sleepwear, pajamas, rompers and one-piece garments; Children's and infant's apparel, namely, jumper coveralls, overall sleepwear, pajamas, rompers and one-piece garments; gloves as clothing; clothing, namely arm warmers; clothing, namely knee warmers; clothing, namely, neck tubes; women’s clothing, namely, shirts, dresses, skirts, blouses; pockets for clothing; shoulder wraps for clothing; cloth bibs for adult diners; clothing, namely, wraparounds; sweatshirts for babies, adults, children, women and men; clothing wraps; tops as clothing; headwear for babies, adults, children, women, and men; pants for babies, adults, children, women and men; clothing items, namely adhesive pockets that may be affixed directly to the body as a decorative piece of clothing with utility; outerwear, namely, coats, hats, gloves; knitwear, namely, shirts, dresses, sweaters Character Count: 1090
$350 + $200 surcharge fee for using free-form text box	Specialty clothing for babies, adults, children, dancers, swimmers; Clothing, namely, blouses, shirts, tops, pants, slacks, jeans, skirts, shorts, jackets, dresses, hosiery, socks, gloves, hats, scarves, hats, belts, sleepwear, lingerie and shoes; athletic shoes with spikes and athletic uniforms for use with such shoes Character Count: 320
$350 + $200 surcharge fee for using free-form text box + $200 for exceeding 1000 characters	Clothing, namely, trousers, jackets, overcoats, coats, skirts, suits, jerseys, waistcoats, shirts, T-shirts, sweatshirts, dresses, Bermuda shorts, shorts, pajamas, pullovers, jeans, tracksuits, rainwear, beachwear, bathing suits, swimming suits; sports clothing, namely, gym shorts, jogging pants, jogging suits, sports shirts; clothing for babies, namely, infant and toddler one piece clothing, infant and baby sleepers, infants' trousers, infants' shoes and boots, baby dresses, baby underwear, baby skirts, baby sweaters, baby shirts, baby pyjamas, baby coats, baby slippers, baby jackets, baby socks, swaddling clothes of textile for babies; underclothing; bodices; brassieres; camisoles; underpants; socks; footwear, namely, shoes (excluding orthopedic shoes), sandals, waterproof boots, walking boots, booties, sporting shoes, slippers; shoe parts, namely, heelpieces, insoles for footwear, footwear uppers, headgear, namely, caps, skull caps, sports caps, hats, berets; gloves (clothing), stockings, belts (clothing), sarongs, scarves, neck scarves, shawls, collars, neckties, ties, suspender belts Character Count: 1105

U.S. Applications Designated through WIPO

WIPO applications designating the U.S. will pay a flat fee of $600 per class because WIPO is not able to assess surcharge fees after the application has been filed. This new fee applies to WIPO applications with a receipt date on or after February 18, 2025.

List of Application fee changes

Description	Current fee	Final rule fee	Dollar change	Percent change
Application (paper), per class	$750	$850	$100	13
Base application (electronic), per class	n/a	$350	n/a	n/a
Application (TEAS Plus), per class	$250	Discontinue	n/a	n/a
Application (TEAS Standard), per class	$350	Discontinue	n/a	n/a
Fee for failing to meet TEAS Plus requirements, per class	$100	Discontinue	n/a	n/a
Application fee filed with WIPO (section 66(a)), per class	$500	$600	$100	20
Subsequent designation fee filed with WIPO (section 66(a)), per class	$500	$600	$100	20
Fee for insufficient information (sections 1 and 44), per class	n/a	$100	n/a	n/a
Fee for using the free-form text box to enter the identification of goods/services (sections 1 and 44), per class	n/a	$200	n/a	n/a
For each additional group of 1,000 characters beyond the first 1,000 (sections 1 and 44), per class	n/a	$200	n/a	n/a

Increases to AAU/SOU, post-registration maintenance, letter of protest, and petition fees

Additionally, the USPTO is increasing the fees for Amendments to Allege Use and Statements of Use by $50, and is increasing fees for post-registration maintenance, letters of protest, and petitions by a range of $25-$150, as shown in the chart below.

Description	Current fee	Final rule fee	Dollar change	Percent change
Amendment to allege use (AAU), per class (paper)	$200	$250	$50	25
Statement of use (SOU), per class (paper)	$200	$250	$50	25
Amendment to allege use (AAU), per class (electronic)	$100	$150	$50	50
Statement of use (SOU), per class (electronic)	$100	$150	$50	50
Section 9 registration renewal application, per class (paper)	$500	$525	$25	5
Section 8 declaration, per class (paper)	$325	$425	$100	31
Section 15 declaration, per class (paper)	$300	$350	$50	17
Section 71 declaration, per class (paper)	$325	$425	$100	31
Section 9 registration renewal application, per class (electronic)	$300	$325	$25	8
Section 8 declaration, per class (electronic)	$225	$325	$100	44
Section 15 declaration, per class (electronic)	$200	$250	$50	25
Section 71 declaration, per class (electronic)	$225	$325	$100	44
Renewal fee filed at WIPO	$300	$325	$25	8
Letter of protest	$50	$150	$100	200
Petition to the Director (paper)	$350	$500	$150	43
Petition to revive an application (paper)	$250	$350	$100	40
Petition to the Director (electronic)	$250	$400	$150	60
Petition to revive an application (electronic)	$150	$250	$100	67

Please let us know if you have any questions or would like to discuss.

Best,

OFFICE

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