United States Patent and Trademark Office OG Notices: 02 August 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: Final rule.
SUMMARY: The United States Patent and Trademark Office (Office) is
amending its rules to permit an applicant to pay a reduced fee under
certain circumstances when the applicant uses 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 section 44 of the Trademark Act. The Office will 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 file communications regarding the application
through TEAS, and agree to receive communications concerning the
application by electronic mail (e-mail) during the pendency of the
application. 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: Effective Date: July 18, 2005.
FOR FURTHER INFORMATION CONTACT: Mary E. Hannon, Office of the Deputy
Commissioner for Trademark Examination Policy, by telephone at (571)
272-9569, by e-mail to mary.hannon@uspto.gov, or by facsimile to (571)
273-9569.
SUPPLEMENTARY INFORMATION: A proposed rule was published in the Federal
Register (70 FR 17636) on April 7, 2005, and in the Official Gazette on
May 3, 2005. Two organizations, three attorneys, one law firm, and two
individuals submitted written comments.
The Office will offer a reduced fee to TEAS applicants who use the
Office's Trademark/Servicemark Application, Principal Register form if:
(1) The application meets the additional filing requirements specified
in Sec. 2.22(a); (2) the applicant files certain communications
regarding the application through TEAS; and (3) the applicant agrees to
receive 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 Sec. 2.6(a)(1)(iv)
if, at any time during examination of the TEAS Plus application, the
Office determines that: (1) The application did not meet the filing
requirements of Sec. 2.22(a) on the filing date; (2) the applicant
filed one of the communications listed in Sec. 2.23(a) on paper; or
(3) 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 final rule is in accordance with the Consolidated
Appropriations Act, 2005, Sec. 2, Division B, Title VIII, Sec. 802 of
Public Law 108-447, 118 Stat. 2809, 2929, enacted on December 8, 2004.
The Appropriations Act amends the Trademark Act of 1946 to require
that:
During 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
the registration of a trademark 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 final rule was published at 70 FR 2952 (Jan. 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 under section 1 or 44 of the Trademark Act
is now $325.00 per class.
Requirements for a TEAS Plus Application
This rule sets forth the requirements for TEAS applications that
must be satisfied in order 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 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 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 basis or bases for filing under section 1 and/or
section 44 of the Act that satisfy all the requirements of Sec. 2.34.
If more than one basis is set forth, the applicant must comply with the
requirements of Sec. 2.34 for each asserted basis;
(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 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)(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 clear drawing of the mark. If the applicant does not claim
standard characters, the applicant must attach a digitized image of the
mark in .JPG format. If the mark includes color, the drawing must show
the mark in color;
(13) If the mark is in standard characters, a mark comprised of
only characters in the Office's standard character set available at
http://www.uspto.gov/teas/standardCharacterSet.html, typed in the
appropriate field of the TEAS Plus form;
(14) If the mark includes color, a statement naming the color(s)
and describing where the color(s) appears on the mark, and a claim that
the color(s) is a feature of the mark;
(15) If the mark is not in standard characters, a description of
the mark;
(16) If the mark includes non-English wording, an English
translation of that wording;
(17) If the mark includes non-Latin characters, a transliteration
of those characters;
(18) If the mark includes an individual's name or portrait, either:
(1) a statement that identifies the living individual whose name or
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);
(19) 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
(20) If the application is a concurrent use application, compliance
with Sec. 2.42.
In addition to the TEAS Plus application filing requirements in
Sec. 2.22, a TEAS Plus applicant must comply with the requirements set
forth in Sec. 2.23. The applicant must: (1) Continue to receive
communications from the Office by e-mail; and (2) file the following
documents through TEAS: response(s) to Office action(s); request(s) to
change the correspondence address; appointment or revocation of power
of attorney; appointment or revocation of domestic representative;
preliminary amendment(s); amendment(s) to allege use under section 1(c)
of the Act; statement(s) of use under section 1(d) of the Act;
request(s) for extensions of time to file a statement of use under
section 1(d) of the Act; and request(s) to delete a section 1(b) basis.
Discussion of Specific Rules
The Office is adding Sec. 2.22, and amending Secs. 2.6, 2.23,
2.53, and 7.25.
The Office is revising Sec. 2.6(a)(1) to add new subsections (iii)
and (iv). Section 2.6(a)(1)(iii) adds a new fee in the amount of
$275.00 per class for filing a TEAS Plus application under Sec. 2.22.
Section 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 Sec. 2.22 that does
not meet the requirements of Secs. 2.22 and 2.23. The additional
fee is the difference between the filing fee for a regular TEAS
application and the reduced fee for a TEAS Plus application.
The Office is adding a new Sec. 2.22. Section 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 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/services, an applicant
will be instructed to enter search terms appropriate for the desired
goods/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, 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.
Section 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 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. Section 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 as of the
filing date.
Section 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 is removing the provisions of the current Sec. 2.23,
which sets forth the Office practice of assigning serial numbers to
applications and informing applicants of serial numbers and filing
dates. The Office has no intention of changing this practice, but is
merely deleting this administrative information from the rules of
practice. Such administrative practices are generally set forth in the
Office's Trademark Manual of Examining Procedure (TMEP).
The Office is adding new subsections Secs. 2.23(a) and
2.23(b). Section 2.23(a) sets forth additional examination requirements
for a TEAS Plus application. Section 2.23(a)(1) requires that applicant
file the following communications through TEAS: (1) Responses to Office
actions (except notices of appeal); (2) Requests to change the
correspondence address or owner's address; (3) Appointment or
revocation of power of attorney; (4) Appointment or revocation of
domestic representative; (5) Preliminary amendments; (6) Amendments to
allege use under section 1(c) of the Act; (7) Statements of use under
section 1(d) of the Act; (8) Request(s) for extensions of time to file
a statement of use under section 1(d) of the Act; and (9) Requests to
delete a section 1(b) basis.
Applicants are encouraged to file notices of appeal through the
Electronic System for Trademark Trials and Appeals (ESTTA), available
on-line at http://www.uspto.gov, but this is not mandatory.
Proposed Secs. 2.23(a)(2) and 2.62(b) required that applicants
file responses to Office actions within two months of the mailing date,
but the Office has withdrawn this proposal.
Section 2.23(a)(2) requires that the applicant continue to receive
communications from the Office by electronic mail.
Section 2.23(b) requires that the applicant pay the additional fee
set forth in Sec. 2.6(a)(1)(iv) if the applicant fails to meet any of
the requirements in Sec. 2.23(a) during the pendency of the
application.
The Office is revising Sec. 2.53(a) to break it into subsections
(a)(1) and (a)(2). Section 2.53(a)(1) provides that in a TEAS Plus
application, an applicant who seeks registration of a standard
character mark must enter the mark in the appropriate field on the TEAS
Plus form. Section 2.53(a)(2) provides that in all other TEAS
submissions, an applicant seeking registration of a standard character
mark must either (1) enter the mark in the appropriate field on the
TEAS form, or (2) attach a digitized image of the mark that meets the
requirements of Sec. 2.53(c), and check the box to claim that the mark
consists of standard characters. Thus, a TEAS Plus applicant will not
have the option of attaching a digitized image of a standard character
mark. The TEAS Plus applicant must enter a mark comprised of 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.
When issuing an Office action in a TEAS Plus application, the
examining attorney will require that the applicant either respond
through TEAS, or, if responding on paper, include the additional $50.00
per class fee with the response.
The Office is amending Sec. 7.25(a) to add 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.
Responses to Comments
Identification of Goods/Services
Comment: Three comments note that the Office's Goods and Services
Manual includes many "open-ended" listings that require an applicant
to complete parenthetical information, such as "headgear, namely
(specify type, e.g., hats, caps)," and ask whether a TEAS Plus filer
will be able to complete the parenthetical information without being
subject to the higher fee.
Response: The TEAS Plus form will permit an applicant to select any
identification in the Manual, including those that require the
applicant to complete parenthetical information. When the applicant
selects an "open-ended" identification, that identification will
permit the applicant to type the necessary information, as per the
instructions within the listing (e.g., "specify the function of the
programs"). If an applicant attempts to use such a listing without
completing the required information, TEAS Plus will generate an error
message.
Comment: One comment asks whether an applicant will lose TEAS Plus
status if the applicant completes the parenthetical information in an
open-ended identification, but is later required to amend the
parenthetical information because it is deemed indefinite.
Response: The applicant will not lose TEAS Plus status in this
situation, unless the applicant uses the free-text field to insert an
additional list of items into the identification, or fills it with
inappropriate information.
Comment: One comment asks whether an applicant will lose TEAS Plus
status if the applicant is required to add a class to its application,
or to amend the goods or services in a single class of a multi-class
application, and, if so, whether the additional fee will apply only to
the newly added or amended class.
Response: Section 2.22(a)(8) requires that the goods/services be
correctly classified. An applicant will lose TEAS Plus status if
amendment of the classification is required because the applicant
classified the goods/services in the wrong class, and will be required
to pay the additional fee for all classes in the application. However,
it is extremely unlikely that an application will lose its TEAS Plus
status because the goods/services are incorrectly classified, because
the TEAS Plus form is designed to automatically provide the correct
class for goods/services selected from the Goods and Services Manual,
and it will not permit an applicant to edit the classification field on
the form.
The application will not lose its TEAS Plus status if the examining
attorney determines during examination that the original identification
of goods/services is inaccurate and requires amendment of the
identification or classification.
Comment: Three comments note that there are many goods and services
that are new and not yet listed in the Goods and Services Manual. Two
comments suggest that Sec. 2.22(a)(8) be amended to include an
exception for goods and services that are not yet included in the
Manual, but are otherwise acceptable. Two comments urge the Office to
act promptly on suggestions for supplementing the Manual, to enable
more applicants to take advantage of TEAS Plus.
Response: The suggestion to include an exception for goods and
services that are not yet included in the Manual has not been adopted.
It is not feasible to provide such exceptions to the TEAS Plus rule,
because processing the exceptions would be time-consuming and costly,
and would thus defeat the purpose of TEAS Plus.
The Office continually updates its Goods and Services Manual, and
actively seeks suggestions from interested members of the public. See
Request for Suggestions from the Public for Additions to the Trademark
Acceptable Identification of Goods and Services Manual, 1269 TMOG 29
(April 1, 2003). Suggestions can be sent to tmidsuggest@uspto.gov. The
Office will act upon these suggestions promptly, so as to enable as
many applicants as possible to take advantage of TEAS Plus.
Drawings
Comment: Two comments note that the Office's standard character set
at http://www.uspto.gov/teas/standardCharacterSet.html currently
includes both supported and unsupported standard characters, and that
an applicant whose mark includes unsupported characters must attach a
.JPG image of its mark, which is not permitted in a TEAS Plus
application. The comments urge the Office to permit applicants to file
TEAS Plus applications for marks that include the characters that are
currently unsupported.
Response: The characters that are unsupported in a regular TEAS
application will be supported in TEAS Plus. The TEAS Plus form is
designed to support all characters in the Office's standard character
set.
Comment: One comment notes that proposed Sec. 2.22(a)(12) required
a drawing that meets the requirements of 37 CFR 2.51 and 2.52, and
urges the Office to change these rules to permit applicants to file
drawings that contain gray tones to show shading.
Response: The language in proposed Sec. 2.22(a)(12) has been
changed. The final rule requires "a clear drawing of the mark" in a
TEAS Plus application, the same standard used in Sec. 2.21(a)(3),
which sets forth the requirements for receipt of an application filing
date. Thus, an applicant whose drawing meets the requirements of Sec.
2.21(a)(3) will be entitled to use TEAS Plus even if the drawing does
not meet all the requirements of Secs. 2.51 and 2.52.
It is noted that the Office now accepts drawings that contain the
color gray, or stippling that produces gray tones. See TMEP Sec.
807.07(e); Exam Guide 1-05, issued May 20, 2005, posted at
http://www.uspto.gov/web/offices/tac/notices/examguide1-05.htm.
Requirement for Signed Application
Comment: One comment urges the Office to withdraw the requirement
for a signature on a TEAS Plus application. The comment asserts that
attorneys encounter difficulties in obtaining signatures from their
clients, and that if these attorneys deferred filing until they secured
the required signature, their clients could miss a deadline for
claiming priority. The comment notes that applications are currently
not examined until 5-6 months after filing, and suggests that the
Office permit applicants to provide a signature within a short time
period after filing, such as 2-3 months.
Response: The suggestion has not been adopted. TEAS Plus will lower
the cost of examination and reduce pendency in large part because most
applications will be complete when filed, and will therefore, result in
the issuance of fewer Office actions. Allowing applicants to submit
signatures "within a short time after filing" could often result in
the need for an Office action, which would be costly and burdensome and
defeat the purpose of TEAS Plus.
Type of Mark or Type of Application
Comment: One comment notes that regular TEAS forms are available
for applications on the Supplemental Register, and for collective and
certification mark applications, and questions the rationale for
excluding these types of applications from TEAS Plus.
Response: At this time, the Office does not have TEAS Plus forms
for applications for registration on the Supplemental Register, or for
collective and certification marks.
An applicant will lose its TEAS Plus status if the mark later has
to be amended to a collective or certification mark. However, the
applicant will not lose TEAS Plus status if the application is amended
from the Principal to the Supplemental Register, as long as the
amendment is filed through TEAS.
TEAS Validation
Comment: Two comments suggest that the Office take steps to ensure
that the TEAS Plus form will flag missing items during validation.
Response: TEAS Plus will flag missing items and will not accept the
transmission if the applicant omits one of the elements that is
required for all TEAS Plus applications. However, TEAS Plus will accept
the transmission of an application that omits an item that is required
for some applications but not others, e.g., a translation of non-
English wording. Omission of such an item could trigger a requirement
for the additional fee. Moreover, the additional fee may be required if
an applicant enters inappropriate information in a required field. For
example, if an applicant enters "???" as its state of incorporation,
TEAS Plus will accept the transmission, but applicant will be required
to pay the $50 fee to convert the application to a regular TEAS
application. Accordingly, applicants should review their TEAS Plus
applications carefully before transmitting them.
Filing Responses to Office Actions Through TEAS
Comment: Two comments assert that scanning multiple page documents
into .JPG format is cumbersome and time-consuming, since each page of a
document must be scanned separately, and urge the Office to begin
accepting alternative formats.
Response: At this time, each page must be scanned separately, and
only 50 pages can be attached to a single .JPG submission. The Office
is working to resolve this problem, and expects to be able to accept
files in .PDF format in the future. At this time, however, an applicant
whose attachment is not in .JPG format cannot use TEAS Plus.
Comment: Two comments assert that TEAS does not accommodate all
types of communications which a filer might need to make when
responding to an Office action, and request that an exception be made
for situations in which TEAS fails to provide an electronic method to
make a particular filing. The examples given were the inability to file
a response on the same day that the action is sent; the inability to
send a certified copy of a foreign registration, and the inability to
send evidence of radio and television commercials.
Response: TEAS can accommodate most responses to Office actions.
Certified copies of foreign registrations are not required during
examination. A photocopy, which can easily be scanned into a .JPG file,
is sufficient. 15 U.S.C. 1126(e); 37 CFR 2.34(a)(3)(ii).
At this time, TEAS does not have the technical capability to accept
a response to an Office action before the Trademark Applications and
Registrations Retrieval (TARR) system is updated, which could take up
to 72 hours after the action is issued. However, waiting for up to 72
hours is not overly burdensome to applicants. It has been the
experience of the Office that very few responses to Office actions are
filed within 72 hours after an Office action is issued.
It is true that attachments comprising audio or video tapes cannot
be sent directly through TEAS. However, for sound marks there is a
process in place to handle these filings electronically. The sound mark
can be sent in an e-mail attachment as a .WAV file or MP3 file directly
to the TEAS Support Team, at teas@uspto.gov. TMEP Secs. 807.09 and
1202.15. Because the TEAS form will require a .JPG attachment for the
specimen, the applicant must still create a .JPG file for this purpose;
however, it will merely consist of a statement that "A .WAV file (or
MP3 file) has been sent directly to the TEAS Support Team for
processing." TEAS Plus will allow for this same work-around solution.
It is not possible to adapt TEAS Plus to accept every conceivable type
of filing. TEAS Plus offers a reduced fee for filings that meet the
TEAS Plus requirements, because these filings require less work by
Office personnel, and the Office is passing these cost savings on to
applicants. Filings that do not or cannot meet these requirements are
subject to the higher fee because of the additional work that is
required. Exception processing, apart from the work-around solution
already in place for sound marks, is costly and time-consuming, and
would defeat the purpose of TEAS Plus.
Two-Month Response Deadline
Comment: Four comments oppose the two-month response deadline for
TEAS Plus applications. It is asserted that docketing two different
deadlines would be burdensome for applicants and their attorneys; that
the requirement would discriminate against foreign applicants, small
businesses and individual applicants, and benefit wealthier, more
technologically advanced applicants; that there is insufficient
justification for imposing a two-month response deadline absent a
corresponding benefit to applicants or the Office; that the two-month
deadline does not appear to have any bearing on the cost of examination
or on the ease or ability of the Office to correspond with applicants;
that attorneys may be unable to meet the deadline due to difficulties
in communicating with clients, particularly foreign clients, small
entities and clients located in less-developed nations; that there is
no need to reduce the response time in order to accomplish the purposes
of TEAS Plus; that Congress established a six-month response period and
applicants should not have to give up their right to the statutory
response period in order to use TEAS Plus; that while average pendency
may be reduced, TEAS Plus applications could not be abandoned until
after expiration of the statutory six-month deadline; and that the two-
month deadline is problematic because the TEAS system does not
recognize the situation that a deadline expires on a weekend or holiday
and responses filed the next day are considered timely, which poses a
potential trap for applicants who respond near the end of the two-month
deadline.
Response: The Office has withdrawn the proposed requirement for a
two-month response deadline.
It is noted that, while there was a time when TEAS did not accept
transmission of a response filed on the next business day after a
deadline expiring on a weekend or holiday, this problem has been
resolved. TEAS now accepts such responses.
Assigning Serial Numbers
Comment: One comment opposes the removal of the current Sec. 2.23,
which sets forth the Office's administrative practice of assigning
serial numbers to applications and informing the applicant of the
serial number and filing date. The comment notes that prompt receipt of
a filing date and serial number is extremely important to trademark
owners, and asserts that any change in procedure should be subject to
public notice and comment.
Response: The Office has no plans to change its procedures for
assigning filing dates and serial numbers, or for notifying applicants
of serial numbers and filing dates. However, it is unnecessary to set
forth these internal administrative procedures in the Code of Federal
Regulations. The requirements for receipt of a filing date are set forth
in Sec. 2.21, and any change in these requirements is subject to notice
and comment.
E-Mail Communications
Comment: One comment asks how the requirement that an applicant
must receive communications from the Office by electronic mail in Sec.
2.23(a)(2) differs from the requirement in Sec. 2.22(a)(6) that the
applicant provide an e-mail address and authorize the Office to send
correspondence concerning the application by e-mail. The comment also
questioned whether a filer will lose TEAS Plus status if the Office's
e-mail communication capability is interrupted because of a technical
problem, or because the applicant's e-mail address provided at the time
of filing has changed or been replaced.
Response: Sections 2.22 and 2.23 differ in that Sec. 2.22 sets
forth the requirements that must be met at the time of filing, while
Sec. 2.23 sets forth the requirements that must be met during the
pendency of the application to maintain TEAS Plus status. Section
2.22(a)(6) requires that the application as filed include an e-mail
address for correspondence and an authorization for the Office to send
correspondence concerning the application to the applicant by e-mail.
Section 2.23(a)(2) requires that the applicant continue to receive
correspondence by e-mail throughout the pendency of the application.
If an applicant files a request to have correspondence sent on
paper, the applicant will lose TEAS Plus status. However, an applicant
will not lose TEAS Plus status if the e-mail transmission does not go
through due to a technical problem at the USPTO.
Applicants have a duty to notify the Office of any change of the
correspondence address. 37 CFR 2.18; TMEP Sec. 603.03. Therefore, an
applicant will lose TEAS Plus status if an e-mail communication does
not go through because the applicant failed to notify the Office of a
change in the e-mail correspondence address.
Comment: One comment expresses support for the requirement that
applicants authorize correspondence by e-mail, but asserts that the
Office does not consistently process electronically filed requests to
change e-mail addresses, and requests that this issue be addressed.
Response: This problem has been corrected. Requests to change an e-
mail correspondence address filed through TEAS are now automatically
entered into the Office's automated systems.
Collection of Additional Fee
Comment: One comment asks how the fee required by Sec.
2.6(a)(1)(iv) will be collected from applicants who fail to meet the
requirements of Secs. 2.22 and 2.23.
Response: The examining attorney will issue a standard Office
action requiring payment of the additional fee.
When issuing a non-final action on a TEAS Plus application, the
examining attorney will require that the applicant: (1) Respond through
TEAS; or (2) submit the additional fee if filing a paper response. If
the applicant files a paper response without the additional fee, the
requirement for payment of the additional fee will be made final,
assuming that the application is otherwise in condition for final
refusal.
General Inquiry
Comment: One comment expresses support for a reduced fee, and asks
what the requirements will be, and when the rules will go into effect.
Response: The effective date is set forth above, under the heading
"Effective Date," and the requirements are set forth below in
Secs. 2.6, 2.22, 2.23, and 2.53.
Rule Making Requirements
Executive Order 13132
This rule 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 final rule 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 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 final
rule 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 final rule merely provides all trademark applicants,
including small businesses, with an alternative filing method at a
reduced cost, the agency certifies that any economic impact on small
entities affected by the rule will not be significant. The agency did
not receive any comments in response to the certification in the
Regulatory Flexibility Act section of the Notice of Proposed Rule
Making published in the Federal Register (70 FR 17636) on April 7,
2005.
Paperwork Reduction Act
The 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 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 is amending
parts 2 and 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. If more than one basis is set forth, the applicant must
comply with the requirements of Sec. 2.34 for each asserted basis;
(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
Plus 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 clear drawing of the mark. If the applicant does not claim
standard characters, the applicant must attach a digitized image of the
mark in .jpg format. If the mark includes color, the drawing must show
the mark in color;
(13) If the mark is in standard characters, a mark comprised of
only characters in the Office's standard character set, currently
available at http://www.uspto.gov, typed in the appropriate field of
the TEAS Plus form;
(14) If the mark includes color, a statement naming the color(s)
and describing where the color(s) appears on the mark, and a claim that
the color(s) is a feature of the mark;
(15) If the mark is not in standard characters, a description of
the mark;
(16) If the mark includes non-English wording, an English
translation of that wording;
(17) If the mark includes non-Latin characters, a transliteration
of those characters;
(18) If the mark includes an individual's name or portrait, either
(i) a statement that identifies the living individual whose name or
likeness the mark comprises and written consent of the individual, or
(ii) a statement that the name or portrait does not identify a living
individual (see section 2(c) of the Act);
(19) If the applicant owns one or more registrations for the same
mark, a claim of ownership of the registration(s) identified by the
registration number(s), pursuant to Sec. 2.36; and
(20) 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). The application will retain its
original filing date, provided that when filed, the application met the
filing date requirements of Sec. 2.21.
(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 and its heading 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 (except notices of appeal under
section 20 of the Trademark Act);
(ii) Requests to change the correspondence address and owner's
address;
(iii) Appointment and/or revocation of power of attorney;
(iv) Appointment and/or revocation of domestic representative;
(v) Preliminary amendments;
(vi) Amendments to allege use under section 1(c) of the Act or
statements of use under section 1(d) of the Act;
(vii) Request(s) for extensions of time to file a statement of use
under section 1(d) of the Act; and
(viii) Request(s) to delete a section 1(b) basis.
(2) Continue to receive communications from the Office by
electronic mail.
(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 on
the TEAS Plus form.
(2) Standard character drawings in all other TEAS submissions: If
an applicant is filing a standard character drawing, the applicant must
either:
(i) Enter the mark in the appropriate field on the TEAS form; or
(ii) Attach a digitized image of the mark to the TEAS submission
that meets the requirements of paragraph (c) of this section, and check
the box to claim that the mark consists of standard characters.
* * * * *
PART 7 - RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL
REGISTRATION OF MARK
6. 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.
7. 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.
* * * * *
June 29, 2005 JON W. DUDAS
Under Secretary of Commerce for
Intellectual Property and Director of the
United States Patent and Trademark Office