(169) Pilot for Filing Trademark Applications
in an Electronic Environment
Scope of Pilot Program: On or before November 30, 1997, the U.S. Patent
and Trademark Office (PTO) will implement a pilot project to allow
electronic filing of trademark applications. The pilot will be limited
to applications filed under Sections 1(a), 1(b) and 44(d) of the
Trademark Act. Applications based on Section 44(e) of the Act will not
be included in the pilot because of the added complexity involved in the
transmission and receipt of documents certifying registration in an
applicant's country of origin.
Requirements for Participation: The PTO will invite a small number of
filers to participate in this pilot. Pilot participants must have access
to the following: (1) a personal computer; and, (2) a specified computer
network browser. Access to a scanner or digital camera for creating
digitized images in gif or jpg format will be necessary for the
submission of specimens required for applications filed under Section
1(a) and/or special form drawings containing figurative elements for
filings under any Section of the Trademark Act. Participants must also
maintain a deposit account with the PTO for payment of required filing
fees.
Before the application is submitted electronically, the applicant must
print and maintain a paper application, and the application must be
personally signed and dated by the applicant in permanent ink, pursuant
to 37 C.F.R. 1.4(d). Participants also must create and maintain a
verified statement, signed and dated by the applicant in permanent ink
stating that: (1) the information in the electronic submission is
identical to the information in the paper application; and, (2) the
symbol shown in the signature block on the electronic application has
been adopted by the applicant to verify the contents of the application.
These two documents should not be forwarded to the PTO but should be
retained by the applicant or the applicant's representative.
Duration: It is anticipated that the pilot project will run for sixty
days. However, the period for the pilot project may be extended if
necessary. After review and analysis of the pilot results, the PTO plans
to broaden the scope of the electronic-filing program by inviting
additional participants and accepting electronic submissions of
documents other than applications for the registration of trademarks and
service marks.
For the purposes of this pilot only, the following requirements are
waived.
Rule 1.1(a)
The requirement of 37 CFR 1.1(a) that communications intended for the
Patent and Trademark Office must be mailed to the street address of the
Office is waived.
Rule 2.51
The requirement of 37 CFR 2.51(e) that an application for the
registration of a mark that can be represented in typewritten form
include a drawing of the mark typed in capital letters on a separate
sheet of paper complying with the requirements of Setion 2.52 is waived.
Rules 2.52(b) & 2.52(c)
The requirements of 37 CFR 2.52(b) and (c) that drawings must be made on
paper is waived.
Rules 2.56 & 2.58(a)
The requirement of 37 CFR 2.56 and 37 CFR 2.58(a) that applications
under Section 1(a) of the Act include three specimens of the trademark
or service mark as used on or in connection with the goods or services
in commerce is waived. Instead, participants must electronically file
only one specimen of the trademark or service mark as used on or in
connection with the goods or services in commerce.
Point of Contact for this Notice:
Name: Craig Morris
Telephone number: (703) 308-8910 ext. 36
Fax Number: (703) 308-9395
Mailing Address:
Office of the Assistant Commissioner
for Trademarks
Suite 10B10
2900 Crystal Drive
Arlington, Virginia 22202-3513
October 21, 1997 PHILIP G. HAMPTON, II
Assistant Commissioner
for Trademarks
[1204 TMOG 66]