[Federal Register Volume 67, Number 96 (Friday, May 17, 2002)]
[Proposed Rules]
[Pages 35081-35083]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 02-12156]


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DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

37 CFR Part 2

RIN 0651-AB52


Processing Fee for Use of Paper Forms for Submission of 
Applications for Registration and Other Documents

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The United States Patent and Trademark Office (USPTO) proposes 
to amend its rules to require payment of a $50.00 paper-processing fee 
when a party submits a paper instead of an electronically transmittable 
form available through the Trademark Electronic Application System 
(TEAS). If a party submits a paper document to the USPTO, and the TEAS 
system includes a form for preparing that document and transmitting it 
to the USPTO electronically, the fee for submitting the paper document 
will be fifty dollars more than the fee for submitting the equivalent 
electronic document via TEAS.

DATES: Comments must be received by June 17, 2002, to ensure 
consideration.

ADDRESSES: Mail comments to the Commissioner for Trademarks, 2900 
Crystal Drive, Arlington, Virginia 22202-3513, attention Craig Morris; 
fax comments to (703) 872-9279, attention Craig Morris; or e-mail 
comments to [email protected]. Copies of all comments will be 
available for public inspection in Suite 10B10, South Tower Building, 
10th floor, 2900 Crystal Drive, Arlington, Virginia 22202-3513, from 
8:30 a.m. until 5:00 p.m., Monday through Friday, as well as on the 
USPTO web site: www.uspto.gov.

FOR FURTHER INFORMATION CONTACT: Craig Morris, Office of the 
Commissioner for Trademarks, (703) 308-8910, extension 136; or e-mail 
to [email protected].

SUPPLEMENTARY INFORMATION: The USPTO proposes to amend 37 CFR 2.6(a), 
Sec. 2.6(a) of the Rules of Practice in Trademark Cases, (rules), to 
provide that if a party submits a document using paper, and a form for 
preparing and electronically submitting that document is available in 
the Trademark Electronic Application System (TEAS), the fee for 
submitting the paper document will be $50.00 more than the fee for 
submitting the equivalent TEAS document.
    TEAS is a collection of electronic trademark-document forms. The 
documents for which TEAS forms are currently available are: (1) 
Applications for registration of marks under Sections 1 and 44, 
Trademark Act of 1946, as Amended, (Trademark Act), 15 U.S.C. 1051 and 
1026; (2) amendments to allege use under section 1(c) of the Trademark 
Act, 15 U.S.C. 1051(c); (3) statements of use under section 1051(d) of 
the Trademark Act, 15 U.S.C. 1051(d); (4) requests for extensions of 
time to file a statement of use under section 1(d) of the Trademark 
Act, 15 U.S.C. 1051(d); (5) affidavits of continued use or excusable 
nonuse under section 8 of the Trademark Act, 15 U.S.C. 1058; (6) 
applications for renewal under section 9, 15 U.S.C. 1059; (7) 
affidavits of incontestability under section 15 of the Trademark Act, 
15 U.S.C. 1065; (8) combined affidavits under sections 8 and 15 of the 
Trademark Act, 15 U.S.C. 1058 and 1065; and (9) combined filings under 
sections 8 and 9 of the Trademark Act, 15 U.S.C. 1058 and 1059.
    As additional TEAS forms are created, the USPTO may, after 
appropriate notice, require that parties who submit paper documents in 
place of these new TEAS forms pay a $50.00 processing fee for each 
document submitted on paper.
    The amount of the processing fee was calculated using the Activity-
Based Costing method employed by the USPTO in its budgeting process. 
The $50.00 paper-processing fee reflects the additional average cost of 
processing a paper document rather than an electronic document within 
the Trademark Operation.
    Each TEAS form can be completed by the trademark applicant or 
attorney and filed with the USPTO at the click of a button. The system 
is available at www.uspto.gov 24 hours a day, seven days a week, and 
can be used by anyone with NETSCAPE NAVIGATOR 
(version 3.0 or higher) or MICROSOFT INTERNET 
EXPLORER (Version 4.0 or higher).
    To file an initial TEAS application for a stylized or design mark, 
or to include a specimen with a TEAS submission, the filer must attach 
a black-and-white GIF or JPG image file. Additionally, although TEAS is 
available at all times, during the hours between 11 p.m. EST, Saturday, 
and 6 a.m. EST, Sunday, credit card payments cannot be processed. 
Therefore, during those hours, any fees associated with a TEAS 
submission cannot be paid using a credit card. However, fees may be 
paid at all times using either electronic funds transfers or a USPTO 
deposit account.

Benefits of a Processing fee for Paper Filings

    When a customer elects to use TEAS rather than paper, substantial 
benefits accrue both to the customer and to the USPTO.
    Processing paper documents is more costly, labor-intensive, and 
results in additional errors, misfilings and losses as contrasted to 
electronic filing. A new application must undergo multiple steps before 
it is ready for examination, including fee processing, review for 
minimum filing requirements, capture of data into automated databases, 
and paper file jacket assembly. In addition to processing new 
applications, the USPTO must sort through several thousand other 
documents that are received on a daily basis. These documents must be 
delivered to the appropriate work unit, matched with the paper file, 
and entered into the file jacket and the automated systems.
    Processing electronically submitted TEAS documents, in contrast, is 
substantially less costly and less labor intensive, and is subject to 
fewer errors. As a result, the data in the USPTO's databases from an 
electronically submitted document tends to be of higher quality than 
the same data from a paper document and is moved into the USPTO's 
databases at substantially less cost than the data captured from paper 
documents. The data provided in electronic submissions is tagged to 
permit transfer into the USPTO's databases with a minimum of human 
intervention. Additionally, electronically submitted documents are less 
likely to be misdirected.
    Electronic filing benefits the public as well. TEAS is available 
for filing trademark documents 24 hours a day, seven days a week at 
http://www.uspto.gov. During the hours between 11 p.m. EST, Saturday, 
and 6 a.m. EST, Sunday, TEAS is available but credit card payments 
cannot be processed. When a document is filed electronically, the USPTO 
receives the document within seconds after filing,

[[Page 35082]]

and immediately issues a confirmation of filing via e-mail. This 
confirmation is evidence of filing should any question arise as to the 
filing date of the document. Under Sec. 1.6(a)(4) of the rules, 
trademark-related correspondence filed via TEAS is considered to have 
been filed on the date the USPTO receives a complete transmission of 
the correspondence, regardless of whether that date is a Saturday, 
Sunday, or a Federal holiday within the District of Columbia. Thus by 
using TEAS, applicants, registrants and their attorneys can ensure a 
``date certain'' for any filing made using TEAS.
    Electronically filed applications are processed faster than their 
paper counterparts. Filing receipts for TEAS applications are sent via 
e-mail the same day the document is filed, while filing receipts for 
paper applications are mailed about 14 days after filing; critical data 
concerning TEAS applications (e.g., mark, goods and services, owner, 
etc.) are entered into the automated systems (and therefore made 
available to anyone searching USPTO records for conflicting marks) 
within 10 days, while data concerning paper applications are entered 
and made available to the public approximately 14-15 days after filing; 
and TEAS applications are received in the e-Commerce law offices and 
available for review in 20 days, whereas it takes about 70 days to 
assemble and deliver paper application files to the Law Offices.
    Electronic filing and communication allow the USPTO to provide more 
customers with better quality, using fewer resources. Electronic filing 
improves the quality and accuracy of the information that is submitted 
to and processed by the USPTO. Customers have greater assurance that 
the content of the electronic application is complete, because the 
information provided by the customer is loaded directly into the 
USPTO's automated systems.
    A processing fee for filing paper when a TEAS form is available, 
will offset the additional costs that the USPTO incurs when it 
processes paper.
    As the relative costs of processing paper and electronic 
submissions become more apparent, the USPTO may, after appropriate 
notice, revise the rules to lower the fees for TEAS submissions.

Discussion of Specific Rules Changed or Added

    The USPTO proposes to revise paragraph (a) of 37 CFR 2.6 to provide 
that a party who files a paper document that is available in TEAS must 
pay a paper processing fee of fifty dollars.

Rulemaking Requirements

    The USPTO has determined that the proposed rule changes have no 
federalism implications affecting the relationship between the National 
Government and the State as outlined in Executive Order 12612.
    The Chief Counsel for Regulation of the Department of Commerce 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 rule will not 
significantly impact any businesses. As a result, an initial regulatory 
flexibility analysis was not prepared.
    The proposed rule changes are in conformity with the requirements 
of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.), Executive 
Order 12612, and the Paperwork Reduction Act of 1995 (PRA) (44 U.S.C. 
3501 et seq.). The proposed changes have been determined not to be 
significant for purposes of Executive Order 12866.
    Notwithstanding any other provision of law, no person shall 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 rule contains collections of information requirements that 
have been approved by OMB under OMB Control Number 0651-0009. The 
public reporting burden for this collection of information is estimated 
to average as follows: seventeen minutes for applications to obtain 
registrations based on an intent to use the mark under 15 U.S.C. 
1051(b), if completed using paper forms; fifteen minutes for 
applications based on 15 U.S.C. 1051(b), if completed using electronic 
forms; twenty-three minutes for applications to obtain registrations 
based on use of the mark in commerce under 15 U.S.C. 1051(a), if 
completed using paper forms; twenty-one minutes for applications to 
obtain registrations based on 15 U.S.C. 1051(a), if completed using 
electronic forms; twenty minutes for applications to obtain 
registrations based on an earlier-filed foreign application under 15 
U.S.C. 1126(d), if completed using paper forms; nineteen minutes for 
applications to obtain registrations based on 15 U.S.C. 1126(d), if 
completed using electronic forms; twenty minutes for applications to 
obtain registrations based on registration of a mark in a foreign 
applicant's country of origin under 15 U.S.C. 1126(e), if completed 
using paper forms; eighteen minutes for applications to obtain 
registrations based on 15 U.S.C. 1126(e), if completed using electronic 
forms; thirteen minutes for allegations of use of the mark under 
sections 2.76 and 2.88 if completed using paper forms; twelve minutes 
for allegations of use under sections 2.76 and 2.88 if completed using 
electronic forms; ten minutes for requests for extensions of time to 
file statements of use under section 2.89 if completed using paper 
forms; nine minutes for requests for extensions of time to file 
statements of use if completed using electronic forms; eleven minutes 
for Section 8 affidavits if completed using paper forms; ten minutes 
for Section 8 affidavits if completed using electronic forms; fourteen 
minutes for combined Sections 8 and 9 filings if completed using paper 
forms; thirteen minutes for combined Section 8 and 9 filings if 
completed using electronic forms; fourteen minutes for combined 
Sections 8 and 15 affidavits if completed using paper forms; thirteen 
minutes for combined Sections 8 and 15 affidavits if completed using 
electronic forms; eleven minutes for Section 15 affidavits if completed 
using paper forms; and ten minutes for Section 15 affidavits if 
completed using electronic forms. These time estimates include the time 
for reviewing instructions, searching existing data sources, gathering 
and maintaining the data needed, and completing and reviewing the 
collection of information. 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 this burden estimate, or any other aspect 
of this data collection, including suggestions for reducing the burden, 
to the Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 
22202-3513 (Attn: Ari Leifman), and to the Office of Information and 
Regulatory Affairs, OMB, 725 17th Street, NW., Washington, DC 20503 
(Attn: PTO Desk Officer).

List of Subjects in 37 CFR Part 2

    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. 41, as amended,

[[Page 35083]]

the USPTO proposes to amend part 2 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

    1. The authority citation for part 2 continues to read as follows:

    Authority: 35 U.S.C. 2.

    2. Revise Sec. 2.6(s) to read as follows:


Sec. 2.6  Trademark fees.

* * * * *
    (a) * * *

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                                                                                         Electronic     Paper
                     Rule                         Description of trademark processing   filing TEAS   filing fee
                                                                  fee                    fee amount     amount
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(1)...........................................  Application for registration, per              $325         $375
                                                 class.
(2)...........................................  Filing an Amendment to Allege Use               100          150
                                                 under Sec. 1(c), per class.
(3)...........................................  Filing a Statement of Use under Sec.            100          150
                                                 1(d)(1), per class.
(4)...........................................  Filing a request for a six-month                150          200
                                                 Extension of Time to file a Statement
                                                 of Use under Sec. 1(d)(1), per class.
(5)...........................................  Application for renewal, per class....          400          450
(6)...........................................  Additional fee for filing a renewal             100          150
                                                 application during grace period, per
                                                 class.
(7)...........................................  Publication of mark under Sec. 12(c),                        100
                                                 per class.
(8)...........................................  Issuing a New Certificate of                                 100
                                                 Registration.
(9)...........................................  Certificate of Correction, per                               100
                                                 registration.
(10)..........................................  Filing Disclaimer to Registration, per                       100
                                                 registration.
(11)..........................................  Filing an Amendment to Registration,                         100
                                                 per registration.
(12)..........................................  Filing a Section 8 Affidavit, per               100          150
                                                 class.
(13)..........................................  Filing a Section 15 Affidavit, per              200          250
                                                 class.
(14)..........................................  Additional fee for filing under Sec. 8          100          150
                                                 during the six-month grace period,
                                                 per class.
(15)..........................................  Petition to Commissioner..............                       100
(16)..........................................  Petition for Cancellation, per class..                       300
(17)..........................................  Notice of Opposition, per class.......                       300
(18)..........................................  Ex Parte Appeal, per class............                       100
(19)..........................................  Request to Divide an Application, per                        100
                                                 new application file created.
(20)..........................................  Correcting a deficiency in a Sec. 8                          100
                                                 affidavit, per registration.
(21)..........................................  Correcting a deficiency in a renewal                         100
                                                 application, per registration.
(22)..........................................  Filing a combined Sec. 8 affidavit and          500          550
                                                 renewal application, per class.
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* * * * *

    Dated: May 10, 2002.
Nicholas P. Godici,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 02-12156 Filed 5-16-02; 8:45 am]
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