[Federal Register Volume 67, Number 100 (Thursday, May 23, 2002)]
[Rules and Regulations]
[Pages 36099-36102]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 02-12878]


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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Part 1

RIN 0651-AB31


Amendment of Rule Regarding Filing of Trademark Correspondence 
via ``Express Mail''

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Final Rule.

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SUMMARY: The United States Patent and Trademark Office (USPTO) is 
amending its rules to provide that certain trademark documents sent by 
United States Postal Service (USPS) ``Express Mail Post Office to 
Addressee'' service (Express Mail) will no longer be considered to have 
been filed with the USPTO on the date of deposit with the United States 
Postal Service, but will be deemed to have been filed on the date of 
receipt in the USPTO. This amendment will not apply to documents filed 
with the Trademark Trial and Appeal Board (TTAB) and the Assignment 
Branch.

DATE: Effective Date: June 24, 2002.

FOR FURTHER INFORMATION CONTACT: Craig Morris, Office of the 
Commissioner for Trademarks, (703)

[[Page 36100]]

308-8910, extension 136, or e-mail questions to 
[email protected].

SUPPLEMENTARY INFORMATION: A Notice of Proposed Rulemaking was 
published in the Federal Register (66 FR 45792) on August 30, 2001. 
That notice proposed to amend rule 1.10, 37 CFR 1.10, concerning the 
use of USPS Express Mail to eliminate the filing of any document by 
Express Mail for which an electronic form is currently available in 
Trademark Electronic Application System (TEAS) and included proposals 
to amend other rules. The present notice pertains solely to the 
proposal regarding  1.10.
    Written comments regarding the proposal to amend Section 1.10 were 
submitted by one individual, eight law firms, and one organization.

Effect of Mailing Correspondence via ``Express Mail'

    Section 1.10 provides that, if the requirements of the rule are 
met, any correspondence delivered to the USPTO by USPS Express Mail 
will be considered to have been filed with the USPTO on the date of 
deposit with the USPS. Section 1.10 is amended to provide that if an 
electronic form is available in TEAS, but the applicant files a paper 
document, the filing date of the document will be the date of receipt 
in the USPTO, even if such document is delivered by Express Mail.
    Comment: Two comments suggested that receipts issued by the USPS in 
connection with Express Mail submissions provide assurance that a 
document was filed at a particular time, and that the TEAS system 
cannot provide such assurance.
    Response: TEAS provides filers with an assurance that the document 
submitted was received by the USPTO. Within seconds of completion of 
the filing process, the following message appears on the user's screen: 
``Success! We have received your application and assigned the following 
serial number 78/----.'' (or if not an initial application, then 
wording appropriate for the particular filing submitted). Filers can 
print and retain copies of this message. If the message does not appear 
within seconds, then the filing was not completed successfully. Hence, 
there is never any doubt as to whether a document was transmitted 
successfully.
    Additionally, the USPTO provides e-mail acknowledgments as a 
follow-up courtesy. If, for whatever reason, a filer does not receive 
this acknowledgment, the filer may request that the acknowledgment be 
re-sent, so long as the filer has received the ``success'' message 
referred to above.
    Comment: One comment suggested that Section 1.10 should be amended 
to provide that correspondence deposited as Express Mail should be 
considered to have been filed with the USPTO on the date of deposit 
with the USPS even if a TEAS form exists for transmitting that 
correspondence electronically, provided that the filer pays a 
surcharge.
    Response: TEAS provides the same benefit provided by use of Express 
Mail under current  1.10. A TEAS filer is assured that the 
document is received by the USPTO, and that the filing date of a 
document is the date the USPTO receives the transmitted document, 
provided that all requirements for accordance of a filing date are met. 
It is therefore unnecessary to continue to treat the date of deposit as 
Express Mail as the filing date; moreover, filing through TEAS will 
save applicants Express Mail fees.
    Comment: One comment suggested that where correspondence includes 
specimens that cannot be easily scanned, the USPTO should continue to 
allow filing under  1.10.
    Response: The USPTO believes that scanning should be feasible in 
almost all circumstances. Low range scanners and digital cameras are 
relatively inexpensive. The quality of these scanners and cameras is 
sufficient for capturing an image that is acceptable for examination 
purposes.
    Comment: In addition to the proposal to amend  1.10, the 
Notice of Proposed Rulemaking published in the Federal Register (66 FR 
45792) on August 30, 2001, also proposed amendments that are not 
addressed in the present Final Rule. These proposals were to amend 
various sections of 37 CFR to require mandatory use of TEAS forms, 
unless either: (1) The pro se applicant or registrant, or an attorney 
for the applicant or registrant, verifies that he or she lacks access 
to TEAS or the technical capability to use TEAS; or (2) the applicant 
or registrant is a person described in 15 U.S.C. 1126(b). One comment 
suggested that applications mailed via Express Mail should be 
considered to have been filed on the date of deposit, if the applicant 
falls within one of the proposed exceptions to the proposed requirement 
that TEAS must be used in all cases. Another comment asked whether that 
was the intended result of the proposed amendment to Section 1.10, and 
suggested that, if so, the language of  1.10 should be amended 
to so state.
    Response: The USPTO believes that it is unnecessary to amend 
 1.10 to provide that correspondence mailed by Express Mail 
should be considered to have been filed in the USPTO on the date of 
deposit with the USPS, in cases where the filer would be within one of 
the proposed exceptions to the proposed rule that TEAS be utilized in 
all cases. The USPTO believes that it can best meet the needs of its 
filers by encouraging the widespread use of TEAS. Hence, the USPTO 
wishes to provide all filers with incentive to use TEAS, including 
those filers who are persons described in 15 U.S.C. 1126(b). 
Additionally, the USPTO believes that a very small number of filers 
will lack access to TEAS or the capability to use TEAS. Even if a 
filer's computer system becomes temporarily unavailable due to 
technical problems, most filers can utilize alternative systems, such 
as ones maintained by commercial vendors. It would be impractical to 
create an exception to the Express Mail rule that would cover only a 
small number of filers.
    Comment: One comment suggested that computer viruses may at times 
render the Internet, and hence TEAS, unavailable. The comment maintains 
that there should be an exception for these circumstances. The comment 
suggested that if use of Express Mail no longer resulted in the date of 
mailing being treated as the date of filing, then these filers may not 
be able to submit correspondence in time to meet certain filing 
deadlines.
    Response: The USPTO believes that filers can avoid the effects of 
emergencies such as computer viruses by making it a practice not to 
defer TEAS filings until the last possible hour. The USPTO also 
believes that if a filer experiences a computer problem, alternatives 
are available such as the computer services offered by the Patent and 
Trademark Depository Libraries and commercial vendors.
    If the USPTO's TEAS or the Revenue Accounting and Management (RAM) 
server is unavailable, the applicant or registrant can file a petition 
under Trademark Rule 2.146(a)(3)(5), 37 CFR 2.146(a)(5), requesting 
that its submission be deemed to have been filed on the day that it 
attempted to use TEAS. The petition should include an explanation of 
the petitioner's efforts to file using TEAS, any relevant evidence of 
such efforts, and a statement that according to the petitioner's 
knowledge TEAS was unavailable. The petition should be filed within two 
business days of the attempt(s) to file a document using TEAS. The 
USPTO is closely monitoring the operation of the TEAS and RAM servers 
and will routinely grant petitions in the instances where either of 
these USPTO servers are down.
    Comment: One comment asked whether a TEAS application that does

[[Page 36101]]

not identify a filing basis and/or is unsigned would be accepted. This 
comment suggested that if such applications are not accepted by TEAS, 
and if use of TEAS is made mandatory in most cases, then filers who 
wish to file such applications should be allowed to do so using paper. 
This comment further suggested that in such cases, these paper filings, 
if mailed by Express Mail, should be considered filed on the date of 
deposit as Express Mail.
    Response: There is no need to provide an exception for these 
applications since TEAS accepts both submissions that are unsigned and 
submissions that do not identify a filing basis.
    Comment: One comment stated that converting from one system to 
another always entails costs, and that users whose filing systems use 
Express Mail would therefore incur costs if the benefits of Express 
Mail were no longer available.
    Response: Those who use TEAS instead of Express Mail will save the 
cost of using Express Mail. Of course, filers may continue to use 
Express Mail if they wish to do so. The date of receipt of such mail 
will be its actual date of receipt in the USPTO.

Rulemaking Requirements

    The USPTO has determined that the rule change has 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 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 change is 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 comments received did not establish that the rule would have 
a significant impact under the Regulatory Flexibility Act. The changes 
have been determined to be not significant for purposes of Executive 
Order 12866.
    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 final 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 
 2.76 and 2.88 if completed using paper forms; twelve 
minutes for allegations of use under  2.76 and 2.88 
if completed using electronic forms; ten minutes for requests for 
extensions of time to file statements of use under  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 Sections 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 1

    Administrative practice and procedure, Patents.


    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 Patent and 
Trademark Office is amending part 1 of title 37 as follows:

PART 1--RULES OF PRACTICE IN PATENT CASES

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

    Authority: 35 U.S.C. 2, unless otherwise noted.


    2. Revise  1.10(a) to read as follows:


 1.10  Filing of correspondence by ``Express Mail.''

    (a)(1) Any correspondence received by the U.S. Patent and Trademark 
Office (USPTO) that was delivered by the ``Express Mail Post Office to 
Addressee'' service of the United States Postal Service (USPS) will be 
considered filed with the USPTO on the date of deposit with the USPS, 
except for documents described in the following paragraphs (a)(1)(i) 
and (ii) of this section:
    (i) Trademark applications filed under section 1 or 44 of the 
Trademark Act, 15 U.S.C. 1051 and 1126.
    (ii) Other documents for which a Trademark Electronic Application 
System (TEAS) form exists:
    (A) Amendment to allege use under section 1(c) of the Trademark 
Act, 15 U.S.C. 1051(c);
    (B) Statement of use under section 1(d) of the Trademark Act, 15 
U.S.C. 1051(d);

[[Page 36102]]

    (C) 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);
    (D) Affidavit of continued use under section 8 of the Trademark 
Act, 15 U.S.C. 1058;
    (E) Renewal request under section 9 of the Trademark Act, 15 U.S.C. 
1059; and
    (F) Requests to change or correct addresses.
    (2) The date of deposit with USPS is shown by the ``date in'' on 
the ``Express Mail'' label or other official USPS notation. If the USPS 
deposit date cannot be determined, the correspondence will be accorded 
the USPTO receipt date as the filing date. See  1.6(a).
* * * * *

    Dated: May 15, 2002.
Jon W. Dudas,
Acting Under Secretary of Commerce for Intellectual Property and Acting 
Director of the United States Patent and Trademark Office.
[FR Doc. 02-12878 Filed 5-22-02; 8:45 am]
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