Issue 22 | June 13, 2002
UPDATE: New Web-Based Trademark
Prosecution Forms
 On May 24, 2002, we reported that the U.S. Patent and Trademark Office ("PTO") posted two new web-based trademark prosecution forms on their Trademark Electronic Application System ("TEAS") web site.

In light of the new forms, the PTO is now proposing to amend its rules to require payment of a $50 paper-processing fee when a party submits a paper document that is otherwise available as an electronically transmittable form available through TEAS. According to the PTO, electronic filing and communication allow it to provide more customers with better quality, using fewer resources. In fact, the Washington Post reported on June 3, 2002 that up to 135 Trademark Examining Attorneys, over a third of the trademark examining staff, will receive lay-off notifications by the end of July due to trademark application filings being down 21% from last year, and 33% over the past two years.

As yet another disincentive to using paper, effective June 24, 2002, the PTO is amending 37 C.F.R. ยง1.10 to provide that if an electronic form available in TEAS, but the applicant files a paper document, the filing date of the document will be the date of receipt in the PTO, even if the document is delivered by Express Mail. The documents that are specifically identified in the new rule are
  1. Trademark applications filed under section 1 or 44 of the Trademark Act, 15 U.S.C. 1051 and 1126; and
  2. Other documents for which a Trademark Electronic Application System (TEAS) form exists:
    1. Amendment to allege use under section 1(c) of the Trademark Act, 15 U.S.C. 1051(c);
    2. Statement of use under section 1(d) of the Trademark Act, 15 U.S.C. 1051(d);
    3. Request for extension of time to file a statement of use under section 1(d) of the Trademark Act, 15 U.S.C. 1051(d);
    4. Affidavit of continued use under section 8 of the Trademark Act, 15 U.S.C. 1058;
    5. Renewal request under section 9 the Trademark Act, 15 U.S.C. 1059; and
    6. Requests to change or correct addresses.
How long will it be before the patent Electronic Filing System catches up?

To discuss this topic further, please contact the author, Bill Heinze, at Thomas, Kayden, Horstemeyer & Risley. The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.


To SUBSCRIBE to this newsletter, send an Email to aplfadmin@aplf.org

To Unsubscribe from this newsletter, please reply to this Email
with UNSUBSCRIBE in the subject line.