The United States Patent and Trademark Office (Office) is proposing 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 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 â€˜â€˜TEAS Plusâ€™â€™ 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.
Comments must be received by May 9, 2005 to ensure consideration.
More specifically, this proposed rule sets forth the following requirements for TEAS applications to be eligible for a reduced fee of $275.00 per class and only applies to TEAS applications filed on the Officeâ€™s Trademark/Servicemark Application, Principal Register form. Under proposed Â§ 2.22, to obtain a reduced filing fee an application must include the following:
- The applicantâ€™s name and address;
- The applicantâ€™s legal entity;
- The citizenship of an individual applicant, or the state or country of incorporation or organization of a juristic applicant;
- If applicant is a partnership, the names and citizenship of applicantâ€™s
- A name and address for correspondence;
- An e-mail address for correspondence and an authorization for
the Office to send correspondence concerning the application to the
applicant or applicantâ€™s attorney by email;
- One or more basis or bases for filing under sections 1 and/or 44 of the Act that satisfy all the requirements of Â§ 2.34;
- Correctly classified goods and/or services, with an identification of goods and/or services from the Officeâ€™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;
- If the application contains goods and/or services in more than one class, compliance with Â§ 2.86;
- A filing fee for each class of goods and/or services as required by Â§ 2.6(a)(iii);
- A verified statement that meets the requirements of Â§ 2.33, dated and signed by a person properly authorized to sign on behalf of the applicant pursuant to Â§ 2.33(a);
- A drawing of the mark that meets the requirements of Â§Â§ 2.51 and 2.52;
- If the mark is in standard characters, a mark comprised of only characters in the USPTO standard character set available at: www.uspto.gov/teas/standardCharacterSet.html;
- If the mark is not in standard characters, a description of the mark;
- If the mark includes non-English wording, an English translation of that wording;
- If the mark includes non-Latin characters, a transliteration of those characters;
- If the mark includes an individualâ€™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);
- 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 Â§ 2.36; and
- If the application is a concurrent use application, compliance with Â§ 2.42.
In addition to the TEAS Plus filing requirements in proposed Â§ 2.22, an applicant filing a TEAS Plus application ust comply with the examination requirements set forth in proposed Â§ 2.23:
- 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;
- 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);
- agree to receive communications from the Office by email;
- 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.