2021-27116. USPTO To Begin Issuing Electronic Trademark Registration Certificates

AGENCY:

United States Patent and Trademark Office, Commerce.

ACTION:

Request for comments.

SUMMARY:

The United States Patent and Trademark Office (USPTO) is seeking comments on its plan to begin issuing electronic trademark registration certificates in the spring of 2022. Upon issuance, the electronic registration certificate will be the official registration certificate. After the USPTO begins issuing electronic registration certificates, trademark owners will have the option to order paper “presentation” copies for a fee. They will also continue to be able to order certified copies of their trademark registrations. This notice outlines the USPTO's plan and requests comments from U.S. trademark owners, practitioners, and other interested parties regarding their views about this plan.

DATES:

Written comments must be received on or before December 15, 2021.

ADDRESSES:

Comments regarding this notice should be sent to [e-mail], with the subject line “Electronic Registration Certificates.” If a submission by email is not feasible due to, e.g., a lack of access to a computer and/or the internet, please contact the USPTO for special instructions using the contact information provided in the FOR FURTHER INFORMATION CONTACT section of this notice.

FOR FURTHER INFORMATION CONTACT:

Catherine Cain, Office of the Deputy Commissioner for Trademark Examination Policy, USPTO, at 571-272-8946 or [e-mail].

SUPPLEMENTARY INFORMATION:

The USPTO will begin issuing trademark registration certificates electronically via the USPTO's Trademark Status and Document Retrieval (TSDR) system in the spring of 2022. By doing so, the USPTO is continuing with its efforts to move to full electronic processing of trademark applications and registrations. This change also updates USPTO practice to conform to customer requests and public comments the USPTO has received that indicated a strong preference to receive trademark registration certificates in a digital format rather than as a paper certificate. The change will make the certificates more accessible for trademark owners and decrease the time it takes for trademark owners to receive them.

After implementation, trademark registration certificates will no longer be issued by printing the registration certificate on paper and mailing it to the correspondence address of record. Instead, the USPTO will issue the registration electronically under the electronic signature of the Director and with a digital seal, which will serve to authenticate the registration. The USPTO will upload the official registration certificate to the TSDR database, and an electronic notice will be emailed to the trademark owner with a link to provide access to the certificate upon issue. Posted with the electronic registration certificate will be information regarding registration maintenance requirements pursuant to sections 8(d) and 71(c) of the Trademark Act of 1946. Trademark owners will be able to use the emailed link to view, download, and print a complete copy of the registration certificate at no charge at any time.

While the USPTO will no longer send a paper registration certificate upon issue, trademark owners will be able to obtain a printed copy of the first page of the issued registration that is suitable for framing. This document, known as a “presentation” copy, will be printed on heavy paper; feature a gold foil seal; identify the owner(s); and display bibliographic data, the trademark, and the classes of goods and/or services. Trademark owners who file an initial application on or after the implementation date will be able to order presentation copies for $25 per copy through the Trademark Electronic Application System (TEAS). Trademark owners who filed an initial application before the implementation date will be able to order presentation copies for free using a TEAS form. Trademark owners will continue to be able to order certified copies of the trademark registration for a fee. The certified copy certifies the status and title of the registration and includes the signature of an authorized certifying officer.

Background

The USPTO has made significant efforts to implement end-to-end electronic processing of trademark applications and related submissions. End-to-end electronic processing means that an application and all application- and registration-related submissions are filed and processed electronically, and any related correspondence between the USPTO and the relevant party is conducted electronically. TEAS was established to provide applicants the capability of filing their trademark applications electronically, and TSDR provides real-time access to the electronic file wrappers of U.S. trademark applications and registrations, and displays information contained in USPTO records regarding documents filed under the Madrid system through the United States.

In December 2019, the USPTO added a quick-response code to the paper registration certificate that opens a digital version of the registration certificate in TSDR. This was a step toward providing an official digital registration certificate to replace the printed version. In February 2020, the USPTO began requiring, with limited exceptions, all filers to submit trademark application- and registration-related documents using TEAS. See Changes to the Trademark Rules of Practice To Mandate Electronic Filing (84 FR 69330, December 18, 2019). By mandating electronic filing of trademark applications and submissions concerning applications or registrations through TEAS, the final rule reduced paper processing to an absolute minimum. As part of the rule, and to prepare for the transition to electronic registration certificates, 37 CFR 2.151 was amended to delete the wording regarding sending the certificate of registration.

In an effort to further streamline the trademark application process, the USPTO is now planning to issue trademark registration certificates electronically. The USPTO currently issues approximately 6,000 to 9,000 printed trademark registration certificates per week. The printing process is costly and time-consuming. Each registration certificate must be reviewed by a team of in-house contractors, printed on special paper, and then mailed to customers. Once a paper trademark registration certificate is issued, a copy of the registration certificate is available for viewing and printing by the public in TSDR.

The electronic trademark issuance process would permit the USPTO to issue trademark registrations approximately one to two weeks faster than the current paper process by discontinuing the printing, assembling, and mailing of a paper trademark registration certificate upon issuance. The trademark owner and the public would benefit from this time saved. For example, owners would be able to view and print their electronically issued trademark registrations through TSDR sooner, rather than waiting for their paper trademark registration certificate to be sent by mail.

The USPTO will review any comments received and will publish a notice reminding the public of the transition to electronic registration certificates approximately 30 days before the implementation date, once it is determined.

Andrew Hirshfeld,

Commissioner for Patents, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.