United States Patent and Trademark Office OG Notices: 03 May 2005
DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Parts 2 and 7
[Docket No. 2005-T-056]
RIN 0651-AB88
Requirements To Receive a Reduced Fee for
Filing an Application Through the
Trademark Electronic Application System
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice of proposed rule making.
SUMMARY: The United States Patent and Trademark Office (Office)
proposes to amend its rules to permit an applicant using the Trademark
Electronic Application System (TEAS) to file a trademark or service
mark application for registration on the Principal Register under
section 1 and/or 44 of the Act to pay a reduced fee under certain
circumstances. The Office proposes to offer a reduced fee to TEAS
applicants if the application meets certain filing requirements beyond
those required to receive a filing date. The applicant must also
respond to Office actions within two months of the mailing date, file
communications regarding the application through TEAS, and agree to
receive communications concerning the application by electronic mail
(e-mail). TEAS applications that qualify for the reduced fee option
will be referred to as "TEAS Plus" applications. The reduced fee
option will not apply to applications filed pursuant to section 66(a)
of the Act because they cannot be filed through TEAS.
DATES: Comments must be received by May 9, 2005 to ensure
consideration.
ADDRESSES: Submit comments by e-mail to: TEASPLUS.comments@uspto.gov.
Written comments may be submitted by mail to: Commissioner for
Trademarks, P.O. Box 1451, Alexandria, Virginia 22313-1451, attention
Cheryl L. Black; or by hand delivery to: Trademark Assistance Center,
Concourse Level, James Madison Building-East Wing, 600 Dulany Street,
Alexandria, Virginia, attention Cheryl L. Black.
FOR FURTHER INFORMATION CONTACT: Cheryl L. Black, Office of the
Commissioner for Trademarks, by telephone at (571) 272-9565, by e-mail
to cheryl.black@uspto.gov, or by facsimile at (571) 273-9565.
SUPPLEMENTARY INFORMATION: The Office proposes to offer a reduced fee
to TEAS applicants using the Office's Trademark/Servicemark Application,
Principal Register form if: (1) The application meets certain additional
filing requirements; (2) the applicant responds to Office actions within
two months of the mailing date; (3) the applicant files certain
communications regarding the application through TEAS; and (4) the
applicant agrees to accept communications concerning the application by
e-mail. The application will be referred to as a TEAS Plus application.
The applicant must pay an additional fee set forth in proposed
Sec. 2.6(a)(1)(iv) if, at any time during examination of the TEAS Plus
application, the Office determines that: (1) The application does not meet
the filing requirements of proposed Sec. 2.22(a); (2) the applicant did
not file a complete response to an Office action; (3) the applicant's
response to an Office action was not filed within two months of the mailing
date; (4) the applicant filed one of the communications listed in
proposed Sec. 2.23(a) on paper; or (5) the applicant refused to
receive correspondence from the Office by e-mail.
References in this notice to "the Act," "the Trademark Act," or
"the statute" refer to the Trademark Act of 1946, 15 U.S.C. 1051 et
seq., as amended.
Background
This proposed rule is in accordance with the Consolidated
Appropriations Act, 2005, Public Law 108-447 (Appropriations Act),
enacted on December 8, 2004. The Appropriations Act amends the
Trademark Act of 1946 to require that:
[D]uring fiscal years 2005 and 2006, under such conditions as may
be prescribed by the Director, the fee under Sec.31(a) of the
Trademark Act for (1) the filing of a paper application for trademark
registration shall be $375; (2) the filing of an electronic application
shall be $325; and (3) the filing of an electronic application meeting
certain additional requirements prescribed by the Director shall be
$275.
Effective January 31, 2005, application filing fees were amended in
accordance with the provisions of 15 U.S.C. 1113(a) as amended by the
Appropriations Act. A notice of final rule making was published at 70
FR 2952 (January 19, 2005). The filing fee for paper applications filed
under section 1 or 44 of the Trademark Act is now $375.00 per class,
and the filing fee for TEAS applications filed pursuant to section 1 or
44 of the Trademark Act is now $325.00 per class.
Requirements for a TEAS Plus Trademark Application
This proposed rule sets forth additional requirements for TEAS
applications to be eligible for a reduced fee of $275.00 per class. The
rule only applies to TEAS applications filed on the Office's Trademark/
Servicemark Application, Principal Register form. Under proposed Sec.
2.22, to obtain a reduced filing fee an application must include the
following:
(1) The applicant's name and address;
(2) The applicant's legal entity;
(3) The citizenship of an individual applicant, or the state or
country of incorporation or organization of a juristic applicant;
(4) If applicant is a partnership, the names and citizenship of
applicant's general partners;
(5) A name and address for correspondence;
(6) An e-mail address for correspondence and an authorization for
the Office to send correspondence concerning the application to the
applicant or applicant's attorney by e-mail;
(7) One or more basis or bases for filing under sections 1 and/or
44 of the Act that satisfy all the requirements of Sec.2.34;
(8) Correctly classified goods and/or services, with an
identification of goods and/or services from the Office's Acceptable
Identification of Goods and Services Manual (Goods and Services
Manual). In an application based on section 44 of the Act, the scope of
goods and/or services covered by the section 44 basis may not exceed
the scope of goods and/or services in the foreign application or
registration;
(9) If the application contains goods and/or services in more than
one class, compliance with Sec. 2.86;
(10) A filing fee for each class of goods and/or services as
required by Sec. 2.6(a)(iii);
(11) A verified statement that meets the requirements of Sec.
2.33, dated and signed by a person properly authorized to sign on
behalf of the applicant pursuant to Sec.2.33(a);
(12) A drawing of the mark that meets the requirements of
Secs. 2.51 and 2.52;
(13) If the mark is in standard characters, a mark comprised of
only characters in the USPTO standard character set available at:
http://www.uspto.gov/teas/standardCharacterSet.html;
(14) If the mark is not in standard characters, a description of
the mark;
(15) If the mark includes non-English wording, an English
translation of that wording;
(16) If the mark includes non-Latin characters, a transliteration
of those characters;
(17) If the mark includes an individual's name or portrait, either
(1) a statement that identifies the living individual whose name and
likeness the mark comprises and written consent of the individual, or
(2) a statement that the name or portrait does not identify a living
individual (see section 2(c) of the Act);
(18) If the applicant owns one or more registrations for the same
mark, a claim of ownership of the registration(s) identified by the
U.S. registration number(s), pursuant to Sec. 2.36; and
(19) If the application is a concurrent use application, compliance
with Sec. 2.42.
In addition to the TEAS Plus filing requirements in proposed Sec.
2.22, an applicant filing a TEAS Plus application must comply with the
examination requirements set forth in proposed Sec. 2.23: (1) File
response(s) to Office action(s), request(s) to change the
correspondence address, appointment, revocation or withdrawal of power
of attorney, appointment or revocation of domestic representative, and
preliminary amendment(s) through TEAS; (2) respond completely to Office
actions within two months of the mailing date (except that a notice of
appeal from a final action under section 20 of the Act may be filed
within six months of the mailing date of the Office action); (3) agree
to receive communications from the Office by e-mail; and (4) for
applications with a section 1(b) basis, file any amendment to allege
use, statement of use, request for extension of time to file a
statement of use, or request to delete the section 1(b) basis through
TEAS.
Discussion of Specific Rules
The Office proposes to add Sec. 2.22, and to amend Secs. 2.6,
2.23, 2.53, 2.62 and 7.25.
The Office proposes to revise Sec. 2.6(a)(1) to more clearly
enumerate the application filing fee options and to add new subsections
(iii) and (iv). Proposed Sec. 2.6(a)(1)(iii) adds a new fee for filing
a TEAS Plus application under proposed Sec. 2.22.
Proposed Sec. 2.6(a)(1)(iv) adds a new fee in the amount of $50.00
per class for processing a TEAS Plus application filed under proposed
Sec. 2.22 that does not meet the requirements of proposed Secs.
2.22 and 2.23. The additional fee is the difference between the filing
fee for a TEAS application and the reduced fee for a TEAS Plus
application.
The Office proposes to add a new Sec. 2.22. Proposed Sec. 2.22(a)
sets forth the requirements for filing a TEAS Plus
application. To file a TEAS Plus application, an applicant must use the
electronic Trademark/Servicemark Application, Principal Register form,
accessed from http://teas.uspto.gov, and choose the reduced fee option
presented as the TEAS Plus form on the initial screen.
For most of the filing requirements in proposed Sec. 2.22(a), an
applicant must enter the information in the appropriate data fields on
the TEAS Plus form. To enter the identification of goods and/or
services, an applicant will be instructed to enter search terms
appropriate for the desired goods and/or services within the identified
field on the TEAS Plus form. The system will then retrieve relevant
entries from the Goods and Services Manual, and the applicant must
select one or more of the entries to add to the TEAS Plus form. The
Goods and Services Manual currently available on the Office's Web site
at: http://www.uspto.gov, contains more than 20,000 listings of
acceptable identifications of goods and services.
Proposed Sec. 2.22(b) provides that if a TEAS Plus application
does not meet the filing requirements of paragraph (a), the applicant
must pay the fee required by proposed Sec. 2.6(a)(1)(iv). The
application will retain its original filing date if the initial
application met the minimum application filing requirements of Sec.
2.21. Proposed Sec. 2.22(b) applies where an application is initially
designated as a TEAS Plus application, but upon examination, the Office
determines that the application did not meet the TEAS Plus filing
requirements.
Proposed Sec. 2.22(c) lists the types of TEAS applications that
are not eligible for the reduced fee option under paragraph (a).
Applications for certification marks, collective marks, collective
membership marks and applications for registration on the Supplemental
Register cannot be filed as TEAS Plus applications because the Office
does not have TEAS Plus forms for these types of applications.
The Office proposes to revise current Sec. 2.23. This section
discusses the Office practice of assigning a serial number to
applications and informing the applicant of the serial number and
filing date. The Office will continue this practice but will delete
this administrative information from the rules of practice. Such
administrative practices are generally set forth in the Office's
Trademark Manual of Examining Procedure.
The Office proposes to add new subsections Secs. 2.23(a) and
2.23(b). Proposed Sec. 2.23(a) sets forth additional examination
requirements for a TEAS Plus application. Proposed Sec. 2.23(b)
requires payment of the additional fee set forth in proposed Sec.
2.6(a)(1)(iv), if a TEAS Plus applicant fails to meet any of the
requirements in proposed Sec. 2.23(a) during the pendency of the
application.
The Office proposes to redesignate Sec. 2.53(a) as Sec.
2.53(a)(2), and to amend the rule to state that the requirement applies
to standard character drawings filed with all TEAS submissions except
TEAS Plus applications. The Office proposes to add new paragraph Sec.
2.53(a)(1) to set forth the requirements for standard character
drawings filed with TEAS Plus applications. Proposed Sec. 2.53(a)(1)
provides that a mark in standard characters in a TEAS Plus application
must be entered in the appropriate field on the TEAS Plus form. A TEAS
Plus applicant will not have the option of attaching a digitized image
of a mark in standard characters. The applicant must enter a mark
comprised of only standard characters from the Office's standard
character set, currently available at:
http://www.uspto.gov/teas/standardCharacterSet.html, and the Office will
generate a digitized image of the mark in .jpg format and attach the image
to the TEAS Plus form.
The Office proposes to amend Sec. 2.62 by rewording the current
language to simplify the rule and by redesignating it as Sec. 2.62(a).
The Office also proposes to add Sec. 2.62(b), stating that to maintain
a TEAS Plus application, an applicant's response must: (1) address all
issues raised in the Office action; and (2) be filed within two months
of the mailing date of the Office action. If the applicant does not
file a complete response to an Office action within two months of the
mailing date, the application will lose its TEAS Plus status and the
applicant must pay the additional fee required by proposed Sec.
2.6(a)(1)(iv). This is consistent with proposed Sec. 2.23, discussed
above. The applicant must respond to the Office action within six
months of the mailing date to avoid abandonment. 37 CFR 2.65.
When issuing an Office action in a TEAS Plus application, the
examining attorney will require that the applicant respond to all
issues within two months of the mailing date through TEAS or respond
within six months and include the additional $50.00 per class fee with
the response.
The Office proposes to amend Sec. 7.25(a) to add proposed
Secs. 2.22 and 2.23 to the list of rules in part 2 of this chapter
that do not apply to requests for extension of protection of
international registrations to the United States. A request for
extension of protection to the United States is not eligible for
examination as a TEAS Plus application because it cannot be filed
directly through TEAS.
Rule Making Requirements
Executive Order 13132: This rule making does not contain policies
with federalism implications sufficient to warrant preparation of a
federalism assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866: This rule making has been determined not to
be significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Regulatory Flexibility Act: The Deputy General Counsel for General
Law of the United States Patent and Trademark Office has certified to
the Chief Counsel for Advocacy of the Small Business Administration
that the proposed rule changes will not have a significant impact on a
substantial number of small entities (Regulatory Flexibility Act, 5
U.S.C. 605(b)).
The current filing fees for trademark applications are $375.00 per
class for applications filed on paper and $325.00 per class for
trademark applications filed electronically through the Trademark
Electronic Application System (TEAS). The sole purpose of the proposed
rules is to provide applicants that electronically file trademark
applications through TEAS with the added option of filing the
application for a reduced fee of $275.00 per class. Applications filed
under the reduced fee option will be referred to as TEAS Plus
applications.
In fiscal year 2004, the agency received approximately 245,000
trademark applications. Of that total, the Office estimates that
179,000 trademark applications were filed through TEAS and that 66,000
of the TEAS filers were small entities. The Office projects that it
will receive approximately 264,000 trademark applications in fiscal
year 2005, that an estimated 211,000 will be filed through TEAS, and
that approximately 42,000 TEAS filers will take advantage of the
reduced fee option. The Office estimates that of the projected 42,000
TEAS Plus applications filed during fiscal year 2005, approximately
15,500 will be filed by small entities.
Because the proposed rule merely provides all trademark applicants,
including small businesses, with additional benefits at a reduced cost,
the agency certifies that any economic impact on small entities
affected by the proposed rule will not be significant.
Paperwork Reduction Act: The proposed rules are in conformity with
the requirements of the Paperwork Reduction Act of 1995 (PRA)
(44 U.S.C. 3501 et seq.).
Notwithstanding any other provision of law, no person is required
to nor shall a person be subject to a penalty for failure to comply
with a collection of information subject to the requirements of the PRA
unless that collection of information displays a currently valid OMB
control number.
This proposed rule involves collections of information requirements
subject to the PRA. The collections of information involved in this
rule have been reviewed and previously approved by OMB under the
following control numbers: 0651-0009 and 0651-0050. This rule includes
provisions that affect the fee structures for approved information
collection activities under 0651-0009 Trademark Processing. Changes to
the fee structures, as set forth in this rule, will be submitted to the
Office of Management and Budget for review and approval at the time of
renewal of 0651-0009.
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency, (2)
the accuracy of the agency's estimate of the burden, (3) ways to
enhance the quality, utility, and clarity of the information to be
collected, and (4) ways to minimize the burden of the collection of
information to respondents.
Send comments regarding any other aspect of this data collection,
including suggestions for reducing the burden, to the Commissioner for
Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451 (Attn: Ari
Leifman), and to the Office of Information and Regulatory Affairs, OMB,
725 17th Street, NW., Washington, DC 20230 (Attn: PTO Desk Officer).
List of Subjects
37 CFR Part 2
Administrative practice and procedure, Trademarks.
37 CFR Part 7
Administrative practice and procedure, Trademarks.
For the reasons given in the preamble and under the authority
contained in 35 U.S.C. 2 and 15 U.S.C. 1123, as amended, the Office
proposes to amend part 2 and part 7 of title 37 as follows:
PART 2 - RULES OF PRACTICE IN TRADEMARK CASES
1. The authority citation for 37 CFR part 2 continues to read as
follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
2. Amend Sec. 2.6 to revise paragraph (a)(1) to read as follows:
Sec. 2.6 Trademark fees
* * * * *
(a) * * *
(1) Application filing fees.
(i) For filing an application on paper, per class - $375.00
(ii) For filing an application through TEAS, per class - $325.00
(iii) For filing a TEAS Plus application under Sec. 2.22, per
class - $275.00
(iv) Additional processing fee under Secs. 2.22(b) and 2.23(b),
per class - $50.00
* * * * *
3. Add Sec. 2.22, to read as follows:
Sec. 2.22 Filing requirements for a TEAS Plus application.
(a) A trademark/service mark application for registration on the
Principal Register under section 1 and/or section 44 of the Act will be
entitled to a reduced filing fee under Sec. 2.6(a)(1)(iii) if it is
filed through TEAS and includes:
(1) The applicant's name and address;
(2) The applicant's legal entity;
(3) The citizenship of an individual applicant, or the state or
country of incorporation or organization of a juristic applicant;
(4) If the applicant is a partnership, the names and citizenship of
the applicant's general partners;
(5) A name and address for correspondence;
(6) An e-mail address for correspondence, and an authorization for
the Office to send correspondence concerning the application to the
applicant or applicant's attorney by e-mail;
(7) One or more bases for filing that satisfy all the requirements
of Sec. 2.34;
(8) Correctly classified goods and/or services, with an
identification of goods and/or services from the Office's Acceptable
Identification of Goods and Services Manual, available through the TEAS
form and at http://www.uspto.gov. In an application based on section 44
of the Act, the scope of the goods and/or services covered by the
section 44 basis may not exceed the scope of the goods and/or services
in the foreign application or registration;
(9) If the application contains goods and/or services in more than
one class, compliance with Sec. 2.86;
(10) A filing fee for each class of goods and/or services, as
required by Sec. 2.6(a)(1)(iii);
(11) A verified statement that meets the requirements of Sec.
2.33, dated and signed by a person properly authorized to sign on
behalf of the applicant pursuant to Sec. 2.33(a);
(12) A drawing of the mark that meets the requirements of
Secs. 2.51 and 2.52;
(13) If the mark is in standard characters, a mark comprised of
only characters in the USPTO standard character set available at:
http://www.uspto.gov/teas/standardCharacterSet.html;
(14) If the mark is not in standard characters, a description of
the mark;
(15) If the mark includes non-English wording, an English
translation of that wording;
(16) If the mark includes non-Latin characters, a transliteration
of those characters;
(17) If the mark includes an individual's name or portrait, either
a statement that identifies the living individual whose name or
likeness the mark comprises and written consent of the individual, or a
statement that the name or portrait does not identify a living
individual (see section 2(c) of the Act);
(18) If the applicant owns one or more registrations for the same
mark, a claim of ownership of the registration(s) identified by the
U.S. registration number(s), pursuant to Sec. 2.36; and
(19) If the application is a concurrent use application, compliance
with Sec. 2.42.
(b) If an application does not meet the requirements of paragraph
(a) of this section at the time of filing, the applicant must pay the
fee required by Sec. 2.6(a)(1)(iv). If the application as filed meets
the filing date requirements of Sec. 2.21, the application will retain
its original filing date.
(c) The following types of applications cannot be filed as TEAS
Plus applications under paragraph (a) of this section:
(1) Applications for certification marks (see Sec. 2.45);
(2) Applications for collective marks (see Sec. 2.44);
(3) Applications for collective membership marks (see Sec. 2.44);
and
(4) Applications for registration on the Supplemental Register (see
Sec. 2.47).
4. Revise Sec. 2.23 to read as follows:
Sec. 2.23 Additional requirements for TEAS Plus application.
(a) In addition to the filing requirements under Sec. 2.22(a), the
applicant must:
(1) File the following communications through TEAS:
(i) Responses to Office actions;
(ii) Requests to change the correspondence address and owner's
address;
(iii) Appointment and revocation of power of attorney;
(iv) Withdrawal of attorney;
(v) Appointment and revocation of domestic representative; and
(vi) Preliminary amendments;
(2) Respond to Office actions, including requests for
reconsideration of a final Office action, within two months of the
mailing date, except that a notice of appeal under section 20 of the
Act may be filed within six months of the mailing date. Responses must
address all issues raised in the Office action;
(3) Receive communications from the Office by electronic mail; and
(4) File the following additional communications through TEAS if
the application has a section 1(b) basis:
(i) Amendment to allege use under section 1(c) of the Act or
statement of use under section 1(d) of the Act;
(ii) Request(s) for extensions of time to file a statement of use
under section 1(d) of the Act; and
(iii) Request to delete section 1(b) basis.
(b) If an application does not meet the requirements of paragraph
(a) of this section, the applicant must pay the fee required by Sec.
2.6(a)(1)(iv).
5. Amend Sec. 2.53 to revise paragraph (a) to read as follows:
Sec. 2.53 Requirements for drawings filed through the TEAS.
* * * * *
(a)(1) Standard character drawings in TEAS Plus applications filed
under Sec. 2.22: If an applicant is filing a standard character
drawing, the applicant must enter the mark in the appropriate field.
(2) Standard character drawings in all other TEAS submissions: If
an applicant is filing a standard character drawing, the applicant must
enter the mark in the appropriate field or attach a digitized image of
the mark to the TEAS submission that meets the requirements of
paragraph (c) of this section.
* * * * *
6. Revise Sec. 2.62 to read as follows:
Sec. 2.62 Period for response.
(a) To avoid abandonment, an applicant has six months from the date
of mailing to respond to an Office action (see Sec. 2.65).
(b) In a TEAS Plus application filed under Sec. 2.22, an applicant
must file a response that addresses all issues raised in an Office
action within two months of the mailing date (except that a notice of
appeal under section 20 of the Act may be filed within six months of
the mailing date). If a response is incomplete or is not received
within two months of the mailing date of the Office action, the
applicant must pay the fee required by Sec. 2.6(a)(1)(iv).
PART 7 - RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARK
7. The authority citation for 37 CFR part 7 continues to read as
follows:
Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.
8. Amend Sec. 7.25 to revise paragraph (a) to read as follows:
Sec. 7.25 Sections of part 2 applicable to extension of protection.
(a) Except for Secs. 2.22-2.23, 2.130-2.131, 2,160-2.166,
2.168, 2.173, 2.175, 2.181-2.186 and 2.197, all sections in part 2 and
all sections in part 10 of this chapter shall apply to an extension of
protection of an international registration to the United States,
including sections related to proceedings before the Trademark Trial
and Appeal Board, unless otherwise stated.
* * * * *
April 1, 2005 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and
Director of the United States
Patent and Trademark Office