The USPTO has always tried to incentivize the trademark applicant to pick the goods/services directly from the ID Manual. The USPTO has done this by imposing a per-class penalty for choosing your own words instead of picking from the Manual. For over a decade, the per-class penalty has been $100.
But within recent days, this penalty doubled. It is now $200 per class, as you can see in this table:
| old government fee, per class | new government fee, per class | |
| if you pick the goods from the ID manual | $250 | $350 |
| if you say what goods you want | $350 | $550 |
Which now brings us to the main point of this blog article. There is a nameless person at the USPTO whose job it is to entertain suggestions from the trademark community as to goods/services to add to the ID Manual. It is predictable that now, with the higher penalty (and perhaps due to this very blog article), more members of the trademark community will be sending in more suggestions. I’d guess the nominal two-day response time from this nameless person will get longer, due to the higher volume of suggestions.
A similar situation applies in Australia. IP Australia has a “pick list” incorporating terms from the Madrid Goods and Services Manager and, I believe, some internally-produced terms. There is a significant Official Fee increase if terms outside the “pick list” are included in a Specification of Goods or Services. I ran into an issue several years ago where in a multi-class application the increased Official Fee applied to all classes even though only one class included a term outside the “pick list”. I do not know if that has changed. Is there some concordance between the ID Manual Goods and Services and the Madrid Goods and Services Manager?
There’s a timing problem with suggesting adding goods and services to add to the ID Manual–you can’t do it while your app that just got refused is pending. I now tell clients the application fee is $550 per class, and if they happen to have goods and services that are accurately listed in the ID Manual that I can use when I file the new app, then the client gets a happy surprise when the invoice is less that what was expected.
I attended one of USPTO’s recent training sessions on the new trademark filing system, and was surprised by the fee for not using the ID Manual. I did ask if this could be avoided by getting the description of goods into the ID Manual prior to filing, and they agreed it is a possibility. Key issue is timing, and whether attorney fees for trying to get the id into the ID Manual are offset by savings in fee per class,