05-6947. 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: [e-mail].

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 [phone], by e-mail to [e-mail], or by facsimile at [phone].

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 § 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 § 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 § 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 § 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 § 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 § 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 § 2.86;

(10) A filing fee for each class of goods and/or services as required by § 2.6(a)(iii);

(11) A verified statement that meets the requirements of § 2.33, dated and signed by a person properly authorized to sign on behalf of the applicant pursuant to § 2.33(a);

(12) A drawing of the mark that meets the requirements of §§ 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 § 2.36; and

(19) If the application is a concurrent use application, compliance with § 2.42.

In addition to the TEAS Plus filing requirements in proposed § 2.22, an applicant filing a TEAS Plus application must comply with the examination requirements set forth in proposed § 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 § 2.22, and to amend §§ 2.6, 2.23, 2.53, 2.62 and 7.25.

The Office proposes to revise § 2.6(a)(1) to more clearly enumerate the application filing fee options and to add new subsections (iii) and (iv). Proposed § 2.6(a)(1)(iii) adds a new fee for filing a TEAS Plus application under proposed § 2.22.

Proposed § 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 § 2.22 that does not meet the requirements of proposed §§ 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 § 2.22. Proposed § 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 § 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 § 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 § 2.6(a)(1)(iv). The application will retain its original filing date if the initial application met the minimum application filing requirements of § 2.21. Proposed § 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 § 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 § 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 §§ 2.23(a) and 2.23(b). Proposed § 2.23(a) sets forth additional examination requirements for a TEAS Plus application. Proposed § 2.23(b) requires payment of the additional fee set forth in proposed § 2.6(a)(1)(iv), if a TEAS Plus applicant fails to meet any of the requirements in proposed § 2.23(a) during the pendency of the application.

The Office proposes to redesignate § 2.53(a) as § 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 § 2.53(a)(1) to set forth the requirements for standard character drawings filed with TEAS Plus applications. Proposed § 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 § 2.62 by rewording the current language to simplify the rule and by redesignating it as § 2.62(a). The Office also proposes to add § 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 § 2.6(a)(1)(iv). This is consistent with proposed § 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 § 7.25(a) to add proposed §§ 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 § 2.6 to revise paragraph (a)(1) to read as follows:

§ 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 § 2.22, per class—$275.00

(iv) Additional processing fee under §§ 2.22(b) and 2.23(b), per class—$50.00

* * * * *

3. Add § 2.22, to read as follows:

§ 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 § 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 § 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 § 2.86;

(10) A filing fee for each class of goods and/or services, as required by § 2.6(a)(1)(iii);

(11) A verified statement that meets the requirements of § 2.33, dated and signed by a person properly authorized to sign on behalf of the applicant pursuant to § 2.33(a);

(12) A drawing of the mark that meets the requirements of §§ 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 § 2.36; and

(19) If the application is a concurrent use application, compliance with § 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 § 2.6(a)(1)(iv). If the application as filed meets the filing date requirements of § 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 § 2.45);

(2) Applications for collective marks (see § 2.44);

(3) Applications for collective membership marks (see § 2.44); and

(4) Applications for registration on the Supplemental Register (see § 2.47).

4. Revise § 2.23 to read as follows:

§ 2.23

Additional requirements for TEAS Plus application.

(a) In addition to the filing requirements under § 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 § 2.6(a)(1)(iv).

5. Amend § 2.53 to revise paragraph (a) to read as follows:

§ 2.53

Requirements for drawings filed through the TEAS.

* * * * *

(a)(1) Standard character drawings in TEAS Plus applications filed under § 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 § 2.62 to read as follows:

§ 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 § 2.65).

(b) In a TEAS Plus application filed under § 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 § 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 § 7.25 to revise paragraph (a) to read as follows:

§ 7.25

Sections of part 2 applicable to extension of protection.

(a) Except for §§ 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.

* * * * *

Dated: April 1, 2005.

Jon W. Dudas,

Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.