[Federal Register Volume 70, Number 128 (Wednesday, July 6, 2005)]
[Rules and Regulations]
[Pages 38768-38774]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 05-13301]



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DEPARTMENT OF COMMERCE

Patent and Trademark Office

37 CFR Parts 2 and 7

[Docket No. 2005-T-056]
RIN 0651-AB88


Requirements To Receive a Reduced Fee for Filing an Application 
Through the Trademark Electronic Application System

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Final rule.

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SUMMARY: The United States Patent and Trademark Office (Office) is 
amending its rules to permit an applicant to pay a reduced fee under 
certain circumstances when the applicant uses 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 section 44 of the Trademark Act. The Office will offer a reduced 
fee to TEAS applicants if the application meets certain filing 
requirements beyond those required to receive a filing date. The 
applicant must also file communications regarding the application 
through TEAS, and agree to receive communications concerning the 
application by electronic mail (e-mail) during the pendency of the 
application. TEAS applications that qualify for the reduced fee option 
will be referred to as ``TEAS Plus'' 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.

DATES: Effective Date: July 18, 2005.

FOR FURTHER INFORMATION CONTACT: Mary E. Hannon, Office of the Deputy 
Commissioner for Trademark Examination Policy, by telephone at (571) 
272-9569, by e-mail to [email protected], or by facsimile to (571) 
273-9569.

SUPPLEMENTARY INFORMATION: A proposed rule was published in the Federal 
Register (70 FR 17636) on April 7, 2005, and in the Official Gazette on 
May 3, 2005. Two organizations, three attorneys, one law firm, and two 
individuals submitted written comments.
    The Office will offer a reduced fee to TEAS applicants who use the 
Office's Trademark/Servicemark Application, Principal Register form if: 
(1) The application meets the additional filing requirements specified 
in Sec.  2.22(a); (2) the applicant files certain communications 
regarding the application through TEAS; and (3) the applicant agrees to 
receive communications concerning the application by e-mail. The 
application will be referred to as a TEAS Plus application. The 
applicant must pay an additional fee set forth in Sec.  2.6(a)(1)(iv) 
if, at any time during examination of the TEAS Plus application, the 
Office determines that: (1) The application did not meet the filing 
requirements of Sec.  2.22(a) on the filing date; (2) the applicant 
filed one of the communications listed in Sec.  2.23(a) on paper; or 
(3) the applicant refused to receive correspondence from the Office by 
e-mail.
    References in this notice to ``the Act,'' ``the Trademark Act,'' or 
``the statute'' refer to the Trademark Act of 1946, 15 U.S.C. 1051 et 
seq., as amended.

Background

    This final rule is in accordance with the Consolidated 
Appropriations Act, 2005, Sec. 2, Division B, Title VIII, Sec. 802 of 
Public Law 108-447, 118 Stat. 2809, 2929, enacted on December 8, 2004. 
The Appropriations Act amends the Trademark Act of 1946 to require 
that:

    During fiscal years 2005 and 2006, under such conditions as may 
be prescribed by the Director, the fee under Sec.  31(a) of the 
Trademark Act * * * for: (1) The filing of a paper application for 
the registration of a trademark shall be $375; (2) the filing of an 
electronic application shall be $325; and (3) the filing of an 
electronic application meeting certain additional requirements 
prescribed by the Director shall be $275 * * *.

    Effective January 31, 2005, application filing fees were amended in 
accordance with the provisions of 15 U.S.C. 1113(a), as amended by the 
Appropriations Act. A final rule was published at 70 FR 2952 (Jan. 19, 
2005). The filing fee for paper applications filed under section 1 or 
44 of the Trademark Act is now $375.00 per class, and the filing fee 
for TEAS applications filed under section 1 or 44 of the Trademark Act 
is now $325.00 per class.

Requirements for a TEAS Plus Application

    This rule sets forth the requirements for TEAS applications that 
must be satisfied in order to be eligible for a reduced fee of $275.00 
per class. The rule only applies to TEAS applications filed on the 
Office's Trademark/Servicemark Application, Principal Register form. 
Under Sec.  2.22, to obtain a reduced filing fee an application must 
include the following:
    (1) The applicant's name and address;
    (2) The applicant's legal entity;
    (3) The citizenship of an individual applicant, or the state or 
country of incorporation or organization of a juristic applicant;
    (4) If the applicant is a partnership, the names and citizenship of 
the applicant's general partners;
    (5) A name and address for correspondence;
    (6) An e-mail address for correspondence and an authorization for 
the Office to send correspondence concerning the application to the 
applicant or applicant's attorney by e-mail;
    (7) One or more basis or bases for filing under section 1 and/or 
section 44 of the Act that satisfy all the requirements of Sec.  2.34. 
If more than one basis is set forth, the applicant must comply with the 
requirements of Sec.  2.34 for each asserted basis;
    (8) Correctly classified goods and/or services, with an 
identification of goods and/or services from the Office'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 the goods and/or services in the foreign application or 
registration;
    (9) If the application contains goods and/or services in more than 
one class, compliance with Sec.  2.86;
    (10) A filing fee for each class of goods and/or services as 
required by Sec.  2.6(a)(iii);
    (11) A verified statement that meets the requirements of Sec.  
2.33, dated and signed by a person properly authorized to sign on 
behalf of the applicant pursuant to Sec.  2.33(a);
    (12) A clear drawing of the mark. If the applicant does not claim 
standard characters, the applicant must attach a digitized image of the 
mark in .JPG format. If the mark includes color, the drawing must show 
the mark in color;
    (13) If the mark is in standard characters, a mark comprised of 
only characters in the Office's standard character set available at 
http://www.uspto.gov/teas/standardCharacterSet.html, typed in the 
appropriate field of the TEAS Plus form;
    (14) If the mark includes color, a statement naming the color(s) 
and describing where the color(s) appears on the mark, and a claim that 
the color(s) is a feature of the mark;
    (15) If the mark is not in standard characters, a description of 
the mark;
    (16) If the mark includes non-English wording, an English 
translation of that wording;

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    (17) If the mark includes non-Latin characters, a transliteration 
of those characters;
    (18) If the mark includes an individual's name or portrait, either: 
(1) a statement that identifies the living individual whose name or 
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);
    (19) 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 Sec.  2.36; and
    (20) If the application is a concurrent use application, compliance 
with Sec.  2.42.
    In addition to the TEAS Plus application filing requirements in 
Sec.  2.22, a TEAS Plus applicant must comply with the requirements set 
forth in Sec.  2.23. The applicant must: (1) Continue to receive 
communications from the Office by e-mail; and (2) file the following 
documents through TEAS: response(s) to Office action(s); request(s) to 
change the correspondence address; appointment or revocation of power 
of attorney; appointment or revocation of domestic representative; 
preliminary amendment(s); amendment(s) to allege use under section 1(c) 
of the Act; statement(s) of use under section 1(d) of the Act; 
request(s) for extensions of time to file a statement of use under 
section 1(d) of the Act; and request(s) to delete a section 1(b) basis.

Discussion of Specific Rules

    The Office is adding Sec.  2.22, and amending Sec. Sec.  2.6, 2.23, 
2.53, and 7.25.
    The Office is revising Sec.  2.6(a)(1) to add new subsections (iii) 
and (iv). Section 2.6(a)(1)(iii) adds a new fee in the amount of 
$275.00 per class for filing a TEAS Plus application under Sec.  2.22. 
Section 2.6(a)(1)(iv) adds a new fee in the amount of $50.00 per class 
for processing a TEAS Plus application filed under Sec.  2.22 that does 
not meet the requirements of Sec. Sec.  2.22 and 2.23. The additional 
fee is the difference between the filing fee for a regular TEAS 
application and the reduced fee for a TEAS Plus application.
    The Office is adding a new Sec.  2.22. Section 2.22(a) sets forth 
the requirements for filing a TEAS Plus application. To file a TEAS 
Plus application, an applicant must use the electronic Trademark/
Servicemark Application, Principal Register form, accessed from http://teas.uspto.gov, and choose the reduced fee option presented as the TEAS 
Plus form on the initial screen.
    For most of the filing requirements in Sec.  2.22(a), an applicant 
must enter the information in the appropriate data fields on the TEAS 
Plus form. To enter the identification of goods/services, an applicant 
will be instructed to enter search terms appropriate for the desired 
goods/services within the identified field on the TEAS Plus form. The 
system will then retrieve relevant entries from the Goods and Services 
Manual, and the applicant must select one or more of the entries to add 
to the TEAS Plus form. The Goods and Services Manual, available on the 
Office's web site at: http://www.uspto.gov, contains more than 20,000 
listings of acceptable identifications of goods and services.
    Section 2.22(b) provides that if a TEAS Plus application does not 
meet the filing requirements of paragraph (a), the applicant must pay 
the fee required by Sec.  2.6(a)(1)(iv). The application will retain 
its original filing date if the initial application met the minimum 
application filing requirements of Sec.  2.21. Section 2.22(b) applies 
where an application is initially designated as a TEAS Plus 
application, but upon examination, the Office determines that the 
application did not meet the TEAS Plus filing requirements as of the 
filing date.
    Section 2.22(c) lists the types of TEAS applications that are not 
eligible for the reduced fee option under paragraph (a). Applications 
for certification marks, collective marks, collective membership marks 
and applications for registration on the Supplemental Register cannot 
be filed as TEAS Plus applications because the Office does not have 
TEAS Plus forms for these types of applications.
    The Office is removing the provisions of the current Sec.  2.23, 
which sets forth the Office practice of assigning serial numbers to 
applications and informing applicants of serial numbers and filing 
dates. The Office has no intention of changing this practice, but is 
merely deleting this administrative information from the rules of 
practice. Such administrative practices are generally set forth in the 
Office's Trademark Manual of Examining Procedure (TMEP).
    The Office is adding new subsections Sec. Sec.  2.23(a) and 
2.23(b). Section 2.23(a) sets forth additional examination requirements 
for a TEAS Plus application. Section 2.23(a)(1) requires that applicant 
file the following communications through TEAS: (1) Responses to Office 
actions (except notices of appeal); (2) Requests to change the 
correspondence address or owner's address; (3) Appointment or 
revocation of power of attorney; (4) Appointment or revocation of 
domestic representative; (5) Preliminary amendments; (6) Amendments to 
allege use under section 1(c) of the Act; (7) Statements of use under 
section 1(d) of the Act; (8) Request(s) for extensions of time to file 
a statement of use under section 1(d) of the Act; and (9) Requests to 
delete a section 1(b) basis.
    Applicants are encouraged to file notices of appeal through the 
Electronic System for Trademark Trials and Appeals (ESTTA), available 
on-line at http://www.uspto.gov, but this is not mandatory.
    Proposed Sec. Sec.  2.23(a)(2) and 2.62(b) required that applicants 
file responses to Office actions within two months of the mailing date, 
but the Office has withdrawn this proposal.
    Section 2.23(a)(2) requires that the applicant continue to receive 
communications from the Office by electronic mail.
    Section 2.23(b) requires that the applicant pay the additional fee 
set forth in Sec.  2.6(a)(1)(iv) if the applicant fails to meet any of 
the requirements in Sec.  2.23(a) during the pendency of the 
application.
    The Office is revising Sec.  2.53(a) to break it into subsections 
(a)(1) and (a)(2). Section 2.53(a)(1) provides that in a TEAS Plus 
application, an applicant who seeks registration of a standard 
character mark must enter the mark in the appropriate field on the TEAS 
Plus form. Section 2.53(a)(2) provides that in all other TEAS 
submissions, an applicant seeking registration of a standard character 
mark must either (1) enter the mark in the appropriate field on the 
TEAS form, or (2) attach a digitized image of the mark that meets the 
requirements of Sec.  2.53(c), and check the box to claim that the mark 
consists of standard characters. Thus, a TEAS Plus applicant will not 
have the option of attaching a digitized image of a standard character 
mark. The TEAS Plus applicant must enter a mark comprised of characters 
from the Office's standard character set, currently available at http://www.uspto.gov/teas/standardCharacterSet.html, and the Office will 
generate a digitized image of the mark in .JPG format and attach the 
image to the TEAS Plus form.
    When issuing an Office action in a TEAS Plus application, the 
examining attorney will require that the applicant either respond 
through TEAS, or, if responding on paper, include the additional $50.00 
per class fee with the response.
    The Office is amending Sec.  7.25(a) to add Sec. Sec.  2.22 and 
2.23 to the list of rules in part 2 of this chapter that do not apply 
to requests for extension of

[[Page 38770]]

protection of international registrations to the United States. A 
request for extension of protection to the United States is not 
eligible for examination as a TEAS Plus application because it cannot 
be filed directly through TEAS.

Responses to Comments

Identification of Goods/Services

    Comment: Three comments note that the Office's Goods and Services 
Manual includes many ``open-ended'' listings that require an applicant 
to complete parenthetical information, such as ``headgear, namely 
(specify type, e.g., hats, caps),'' and ask whether a TEAS Plus filer 
will be able to complete the parenthetical information without being 
subject to the higher fee.
    Response: The TEAS Plus form will permit an applicant to select any 
identification in the Manual, including those that require the 
applicant to complete parenthetical information. When the applicant 
selects an ``open-ended'' identification, that identification will 
permit the applicant to type the necessary information, as per the 
instructions within the listing (e.g., ``specify the function of the 
programs''). If an applicant attempts to use such a listing without 
completing the required information, TEAS Plus will generate an error 
message.
    Comment: One comment asks whether an applicant will lose TEAS Plus 
status if the applicant completes the parenthetical information in an 
open-ended identification, but is later required to amend the 
parenthetical information because it is deemed indefinite.
    Response: The applicant will not lose TEAS Plus status in this 
situation, unless the applicant uses the free-text field to insert an 
additional list of items into the identification, or fills it with 
inappropriate information.
    Comment: One comment asks whether an applicant will lose TEAS Plus 
status if the applicant is required to add a class to its application, 
or to amend the goods or services in a single class of a multi-class 
application, and, if so, whether the additional fee will apply only to 
the newly added or amended class.
    Response: Section 2.22(a)(8) requires that the goods/services be 
correctly classified. An applicant will lose TEAS Plus status if 
amendment of the classification is required because the applicant 
classified the goods/services in the wrong class, and will be required 
to pay the additional fee for all classes in the application. However, 
it is extremely unlikely that an application will lose its TEAS Plus 
status because the goods/services are incorrectly classified, because 
the TEAS Plus form is designed to automatically provide the correct 
class for goods/services selected from the Goods and Services Manual, 
and it will not permit an applicant to edit the classification field on 
the form.
    The application will not lose its TEAS Plus status if the examining 
attorney determines during examination that the original identification 
of goods/services is inaccurate and requires amendment of the 
identification or classification.
    Comment: Three comments note that there are many goods and services 
that are new and not yet listed in the Goods and Services Manual. Two 
comments suggest that Sec.  2.22(a)(8) be amended to include an 
exception for goods and services that are not yet included in the 
Manual, but are otherwise acceptable. Two comments urge the Office to 
act promptly on suggestions for supplementing the Manual, to enable 
more applicants to take advantage of TEAS Plus.
    Response: The suggestion to include an exception for goods and 
services that are not yet included in the Manual has not been adopted. 
It is not feasible to provide such exceptions to the TEAS Plus rule, 
because processing the exceptions would be time-consuming and costly, 
and would thus defeat the purpose of TEAS Plus.
    The Office continually updates its Goods and Services Manual, and 
actively seeks suggestions from interested members of the public. See 
Request for Suggestions from the Public for Additions to the Trademark 
Acceptable Identification of Goods and Services Manual, 1269 TMOG 29 
(April 1, 2003). Suggestions can be sent to [email protected]. The 
Office will act upon these suggestions promptly, so as to enable as 
many applicants as possible to take advantage of TEAS Plus.

Drawings

    Comment: Two comments note that the Office's standard character set 
at http://www.uspto.gov/teas/standardCharacterSet.html currently 
includes both supported and unsupported standard characters, and that 
an applicant whose mark includes unsupported characters must attach a 
.JPG image of its mark, which is not permitted in a TEAS Plus 
application. The comments urge the Office to permit applicants to file 
TEAS Plus applications for marks that include the characters that are 
currently unsupported.
    Response: The characters that are unsupported in a regular TEAS 
application will be supported in TEAS Plus. The TEAS Plus form is 
designed to support all characters in the Office's standard character 
set.
    Comment: One comment notes that proposed Sec.  2.22(a)(12) required 
a drawing that meets the requirements of 37 CFR 2.51 and 2.52, and 
urges the Office to change these rules to permit applicants to file 
drawings that contain gray tones to show shading.
    Response: The language in proposed Sec.  2.22(a)(12) has been 
changed. The final rule requires ``a clear drawing of the mark'' in a 
TEAS Plus application, the same standard used in Sec.  2.21(a)(3), 
which sets forth the requirements for receipt of an application filing 
date. Thus, an applicant whose drawing meets the requirements of Sec.  
2.21(a)(3) will be entitled to use TEAS Plus even if the drawing does 
not meet all the requirements of Sec. Sec.  2.51 and 2.52.
    It is noted that the Office now accepts drawings that contain the 
color gray, or stippling that produces gray tones. See TMEP Sec.  
807.07(e); Exam Guide 1-05, issued May 20, 2005, posted at http://www.uspto.gov/web/offices/tac/notices/examguide1-05.htm.

Requirement for Signed Application

    Comment: One comment urges the Office to withdraw the requirement 
for a signature on a TEAS Plus application. The comment asserts that 
attorneys encounter difficulties in obtaining signatures from their 
clients, and that if these attorneys deferred filing until they secured 
the required signature, their clients could miss a deadline for 
claiming priority. The comment notes that applications are currently 
not examined until 5-6 months after filing, and suggests that the 
Office permit applicants to provide a signature within a short time 
period after filing, such as 2-3 months.
    Response: The suggestion has not been adopted. TEAS Plus will lower 
the cost of examination and reduce pendency in large part because most 
applications will be complete when filed, and will therefore, result in 
the issuance of fewer Office actions. Allowing applicants to submit 
signatures ``within a short time after filing'' could often result in 
the need for an Office action, which would be costly and burdensome and 
defeat the purpose of TEAS Plus.

Type of Mark or Type of Application

    Comment: One comment notes that regular TEAS forms are available 
for applications on the Supplemental Register, and for collective and 
certification mark applications, and questions the rationale for 
excluding these types of applications from TEAS Plus.

[[Page 38771]]

    Response: At this time, the Office does not have TEAS Plus forms 
for applications for registration on the Supplemental Register, or for 
collective and certification marks.
    An applicant will lose its TEAS Plus status if the mark later has 
to be amended to a collective or certification mark. However, the 
applicant will not lose TEAS Plus status if the application is amended 
from the Principal to the Supplemental Register, as long as the 
amendment is filed through TEAS.

TEAS Validation

    Comment: Two comments suggest that the Office take steps to ensure 
that the TEAS Plus form will flag missing items during validation.
    Response: TEAS Plus will flag missing items and will not accept the 
transmission if the applicant omits one of the elements that is 
required for all TEAS Plus applications. However, TEAS Plus will accept 
the transmission of an application that omits an item that is required 
for some applications but not others, e.g., a translation of non-
English wording. Omission of such an item could trigger a requirement 
for the additional fee. Moreover, the additional fee may be required if 
an applicant enters inappropriate information in a required field. For 
example, if an applicant enters ``???'' as its state of incorporation, 
TEAS Plus will accept the transmission, but applicant will be required 
to pay the $50 fee to convert the application to a regular TEAS 
application. Accordingly, applicants should review their TEAS Plus 
applications carefully before transmitting them.

Filing Responses to Office Actions Through TEAS

    Comment: Two comments assert that scanning multiple page documents 
into .JPG format is cumbersome and time-consuming, since each page of a 
document must be scanned separately, and urge the Office to begin 
accepting alternative formats.
    Response: At this time, each page must be scanned separately, and 
only 50 pages can be attached to a single .JPG submission. The Office 
is working to resolve this problem, and expects to be able to accept 
files in .PDF format in the future. At this time, however, an applicant 
whose attachment is not in .JPG format cannot use TEAS Plus.
    Comment: Two comments assert that TEAS does not accommodate all 
types of communications which a filer might need to make when 
responding to an Office action, and request that an exception be made 
for situations in which TEAS fails to provide an electronic method to 
make a particular filing. The examples given were the inability to file 
a response on the same day that the action is sent; the inability to 
send a certified copy of a foreign registration, and the inability to 
send evidence of radio and television commercials.
    Response: TEAS can accommodate most responses to Office actions. 
Certified copies of foreign registrations are not required during 
examination. A photocopy, which can easily be scanned into a .JPG file, 
is sufficient. 15 U.S.C. 1126(e); 37 CFR 2.34(a)(3)(ii).
    At this time, TEAS does not have the technical capability to accept 
a response to an Office action before the Trademark Applications and 
Registrations Retrieval (TARR) system is updated, which could take up 
to 72 hours after the action is issued. However, waiting for up to 72 
hours is not overly burdensome to applicants. It has been the 
experience of the Office that very few responses to Office actions are 
filed within 72 hours after an Office action is issued.
    It is true that attachments comprising audio or video tapes cannot 
be sent directly through TEAS. However, for sound marks there is a 
process in place to handle these filings electronically. The sound mark 
can be sent in an e-mail attachment as a .WAV file or MP3 file directly 
to the TEAS Support Team, at [email protected]. TMEP Sec. Sec.  807.09 and 
1202.15. Because the TEAS form will require a .JPG attachment for the 
specimen, the applicant must still create a .JPG file for this purpose; 
however, it will merely consist of a statement that ``A .WAV file (or 
MP3 file) has been sent directly to the TEAS Support Team for 
processing.'' TEAS Plus will allow for this same work-around solution. 
It is not possible to adapt TEAS Plus to accept every conceivable type 
of filing. TEAS Plus offers a reduced fee for filings that meet the 
TEAS Plus requirements, because these filings require less work by 
Office personnel, and the Office is passing these cost savings on to 
applicants. Filings that do not or cannot meet these requirements are 
subject to the higher fee because of the additional work that is 
required. Exception processing, apart from the work-around solution 
already in place for sound marks, is costly and time-consuming, and 
would defeat the purpose of TEAS Plus.

Two-Month Response Deadline

    Comment: Four comments oppose the two-month response deadline for 
TEAS Plus applications. It is asserted that docketing two different 
deadlines would be burdensome for applicants and their attorneys; that 
the requirement would discriminate against foreign applicants, small 
businesses and individual applicants, and benefit wealthier, more 
technologically advanced applicants; that there is insufficient 
justification for imposing a two-month response deadline absent a 
corresponding benefit to applicants or the Office; that the two-month 
deadline does not appear to have any bearing on the cost of examination 
or on the ease or ability of the Office to correspond with applicants; 
that attorneys may be unable to meet the deadline due to difficulties 
in communicating with clients, particularly foreign clients, small 
entities and clients located in less-developed nations; that there is 
no need to reduce the response time in order to accomplish the purposes 
of TEAS Plus; that Congress established a six-month response period and 
applicants should not have to give up their right to the statutory 
response period in order to use TEAS Plus; that while average pendency 
may be reduced, TEAS Plus applications could not be abandoned until 
after expiration of the statutory six-month deadline; and that the two-
month deadline is problematic because the TEAS system does not 
recognize the situation that a deadline expires on a weekend or holiday 
and responses filed the next day are considered timely, which poses a 
potential trap for applicants who respond near the end of the two-month 
deadline.
    Response: The Office has withdrawn the proposed requirement for a 
two-month response deadline.
    It is noted that, while there was a time when TEAS did not accept 
transmission of a response filed on the next business day after a 
deadline expiring on a weekend or holiday, this problem has been 
resolved. TEAS now accepts such responses.

Assigning Serial Numbers

    Comment: One comment opposes the removal of the current Sec.  2.23, 
which sets forth the Office's administrative practice of assigning 
serial numbers to applications and informing the applicant of the 
serial number and filing date. The comment notes that prompt receipt of 
a filing date and serial number is extremely important to trademark 
owners, and asserts that any change in procedure should be subject to 
public notice and comment.
    Response: The Office has no plans to change its procedures for 
assigning filing dates and serial numbers, or for notifying applicants 
of serial numbers and filing dates. However, it is unnecessary to set 
forth these internal administrative procedures in the Code of Federal 
Regulations. The

[[Page 38772]]

requirements for receipt of a filing date are set forth in Sec.  2.21, 
and any change in these requirements is subject to notice and comment.

E-Mail Communications

    Comment: One comment asks how the requirement that an applicant 
must receive communications from the Office by electronic mail in Sec.  
2.23(a)(2) differs from the requirement in Sec.  2.22(a)(6) that the 
applicant provide an e-mail address and authorize the Office to send 
correspondence concerning the application by e-mail. The comment also 
questioned whether a filer will lose TEAS Plus status if the Office's 
e-mail communication capability is interrupted because of a technical 
problem, or because the applicant's e-mail address provided at the time 
of filing has changed or been replaced.
    Response: Sections 2.22 and 2.23 differ in that Sec.  2.22 sets 
forth the requirements that must be met at the time of filing, while 
Sec.  2.23 sets forth the requirements that must be met during the 
pendency of the application to maintain TEAS Plus status. Section 
2.22(a)(6) requires that the application as filed include an e-mail 
address for correspondence and an authorization for the Office to send 
correspondence concerning the application to the applicant by e-mail. 
Section 2.23(a)(2) requires that the applicant continue to receive 
correspondence by e-mail throughout the pendency of the application.
    If an applicant files a request to have correspondence sent on 
paper, the applicant will lose TEAS Plus status. However, an applicant 
will not lose TEAS Plus status if the e-mail transmission does not go 
through due to a technical problem at the USPTO.
    Applicants have a duty to notify the Office of any change of the 
correspondence address. 37 CFR 2.18; TMEP Sec.  603.03. Therefore, an 
applicant will lose TEAS Plus status if an e-mail communication does 
not go through because the applicant failed to notify the Office of a 
change in the e-mail correspondence address.
    Comment: One comment expresses support for the requirement that 
applicants authorize correspondence by e-mail, but asserts that the 
Office does not consistently process electronically filed requests to 
change e-mail addresses, and requests that this issue be addressed.
    Response: This problem has been corrected. Requests to change an e-
mail correspondence address filed through TEAS are now automatically 
entered into the Office's automated systems.

Collection of Additional Fee

    Comment: One comment asks how the fee required by Sec.  
2.6(a)(1)(iv) will be collected from applicants who fail to meet the 
requirements of Sec. Sec.  2.22 and 2.23.
    Response: The examining attorney will issue a standard Office 
action requiring payment of the additional fee.
    When issuing a non-final action on a TEAS Plus application, the 
examining attorney will require that the applicant: (1) Respond through 
TEAS; or (2) submit the additional fee if filing a paper response. If 
the applicant files a paper response without the additional fee, the 
requirement for payment of the additional fee will be made final, 
assuming that the application is otherwise in condition for final 
refusal.

General Inquiry

    Comment: One comment expresses support for a reduced fee, and asks 
what the requirements will be, and when the rules will go into effect.
    Response: The effective date is set forth above, under the heading 
``Effective Date,'' and the requirements are set forth below in 
Sec. Sec.  2.6, 2.22, 2.23, and 2.53.

Rule Making Requirements

Executive Order 13132
    This rule does not contain policies with federalism implications 
sufficient to warrant preparation of a Federalism Assessment under 
Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866
    This final rule has been determined not to be significant for 
purposes of Executive Order 12866 (Sept. 30, 1993).
Regulatory Flexibility Act
    The Deputy General Counsel for General Law of the United States 
Patent and Trademark Office 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 current filing fees for trademark applications are $375.00 per 
class for applications filed on paper and $325.00 per class for 
trademark applications filed electronically through the Trademark 
Electronic Application System (TEAS). The sole purpose of the final 
rule is to provide applicants that electronically file trademark 
applications through TEAS with the added option of filing the 
application for a reduced fee of $275.00 per class. Applications filed 
under the reduced fee option will be referred to as TEAS Plus 
applications.
    In fiscal year 2004, the agency received approximately 245,000 
trademark applications. Of that total, the Office estimates that 
179,000 trademark applications were filed through TEAS and that 66,000 
of the TEAS filers were small entities. The Office projects that it 
will receive approximately 264,000 trademark applications in fiscal 
year 2005, that an estimated 211,000 will be filed through TEAS, and 
that approximately 42,000 TEAS filers will take advantage of the 
reduced fee option. The Office estimates that of the projected 42,000 
TEAS Plus applications filed during fiscal year 2005, approximately 
15,500 will be filed by small entities.
    Because the final rule merely provides all trademark applicants, 
including small businesses, with an alternative filing method at a 
reduced cost, the agency certifies that any economic impact on small 
entities affected by the rule will not be significant. The agency did 
not receive any comments in response to the certification in the 
Regulatory Flexibility Act section of the Notice of Proposed Rule 
Making published in the Federal Register (70 FR 17636) on April 7, 
2005.
Paperwork Reduction Act
    The rules are in conformity with the requirements of the Paperwork 
Reduction Act of 1995 (PRA) (44 U.S.C. 3501 et seq.).
    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 rule involves collections of information requirements subject 
to the PRA. The collections of information involved in this rule have 
been reviewed and previously approved by OMB under the following 
control numbers: 0651-0009 and 0651-0050. This rule includes provisions 
that affect the fee structures for approved information collection 
activities under 0651-0009 Trademark Processing. Changes to the fee 
structures, as set forth in this rule, will be submitted to the Office 
of Management and Budget for review and approval at the time of renewal 
of 0651-0009.
    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,

[[Page 38773]]

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 any other aspect of this data collection, 
including suggestions for reducing the burden, to the Commissioner for 
Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451 (Attn: Ari 
Leifman), and to the Office of Information and Regulatory Affairs, OMB, 
725 17th Street, NW., Washington, DC 20230 (Attn: PTO Desk Officer).

List of Subjects

37 CFR Part 2

    Administrative practice and procedure, Trademarks.

37 CFR Part 7

    Administrative practice and procedure, Trademarks.

0
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 Office is amending 
parts 2 and 7 of title 37 as follows:

PART 2--RULES OF PRACTICE IN TRADEMARK CASES

0
1. The authority citation for 37 CFR Part 2 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.


0
2. Amend Sec.  2.6 to revise paragraph (a)(1) to read as follows:


Sec.  2.6  Trademark fees.

* * * * *
    (a) * * *
    (1) Application filing fees.
    (i) For filing an application on paper, per class--$375.00
    (ii) For filing an application through TEAS, per class--$325.00
    (iii) For filing a TEAS Plus application under Sec.  2.22, per 
class--$275.00
    (iv) Additional processing fee under Sec. Sec.  2.22(b) and 
2.23(b), per class--$50.00
* * * * *

0
3. Add Sec.  2.22, to read as follows:


Sec.  2.22  Filing requirements for a TEAS Plus application.

    (a) A trademark/service mark application for registration on the 
Principal Register under section 1 and/or section 44 of the Act will be 
entitled to a reduced filing fee under Sec.  2.6(a)(1)(iii) if it is 
filed through TEAS and includes:
    (1) The applicant's name and address;
    (2) The applicant's legal entity;
    (3) The citizenship of an individual applicant, or the state or 
country of incorporation or organization of a juristic applicant;
    (4) If the applicant is a partnership, the names and citizenship of 
the applicant's general partners;
    (5) A name and address for correspondence;
    (6) An e-mail address for correspondence, and an authorization for 
the Office to send correspondence concerning the application to the 
applicant or applicant's attorney by e-mail;
    (7) One or more bases for filing that satisfy all the requirements 
of Sec.  2.34. If more than one basis is set forth, the applicant must 
comply with the requirements of Sec.  2.34 for each asserted basis;
    (8) Correctly classified goods and/or services, with an 
identification of goods and/or services from the Office's Acceptable 
Identification of Goods and Services Manual, available through the TEAS 
Plus form and at http://www.uspto.gov. In an application based on 
section 44 of the Act, the scope of the goods and/or services covered 
by the section 44 basis may not exceed the scope of the goods and/or 
services in the foreign application or registration;
    (9) If the application contains goods and/or services in more than 
one class, compliance with Sec.  2.86;
    (10) A filing fee for each class of goods and/or services, as 
required by Sec.  2.6(a)(1)(iii);
    (11) A verified statement that meets the requirements of Sec.  
2.33, dated and signed by a person properly authorized to sign on 
behalf of the applicant pursuant to Sec.  2.33(a);
    (12) A clear drawing of the mark. If the applicant does not claim 
standard characters, the applicant must attach a digitized image of the 
mark in .jpg format. If the mark includes color, the drawing must show 
the mark in color;
    (13) If the mark is in standard characters, a mark comprised of 
only characters in the Office's standard character set, currently 
available at http://www.uspto.gov, typed in the appropriate field of 
the TEAS Plus form;
    (14) If the mark includes color, a statement naming the color(s) 
and describing where the color(s) appears on the mark, and a claim that 
the color(s) is a feature of the mark;
    (15) If the mark is not in standard characters, a description of 
the mark;
    (16) If the mark includes non-English wording, an English 
translation of that wording;
    (17) If the mark includes non-Latin characters, a transliteration 
of those characters;
    (18) If the mark includes an individual's name or portrait, either 
(i) a statement that identifies the living individual whose name or 
likeness the mark comprises and written consent of the individual, or 
(ii) a statement that the name or portrait does not identify a living 
individual (see section 2(c) of the Act);
    (19) If the applicant owns one or more registrations for the same 
mark, a claim of ownership of the registration(s) identified by the 
registration number(s), pursuant to Sec.  2.36; and
    (20) If the application is a concurrent use application, compliance 
with Sec.  2.42.
    (b) If an application does not meet the requirements of paragraph 
(a) of this section at the time of filing, the applicant must pay the 
fee required by Sec.  2.6(a)(1)(iv). The application will retain its 
original filing date, provided that when filed, the application met the 
filing date requirements of Sec.  2.21.
    (c) The following types of applications cannot be filed as TEAS 
Plus applications under paragraph (a) of this section:
    (1) Applications for certification marks (see Sec.  2.45);
    (2) Applications for collective marks (see Sec.  2.44);
    (3) Applications for collective membership marks (see Sec.  2.44); 
and
    (4) Applications for registration on the Supplemental Register (see 
Sec.  2.47).

0
4. Revise Sec.  2.23 and its heading to read as follows:


Sec.  2.23  Additional requirements for TEAS Plus application.

    (a) In addition to the filing requirements under Sec.  2.22(a), the 
applicant must:
    (1) File the following communications through TEAS:
    (i) Responses to Office actions (except notices of appeal under 
section 20 of the Trademark Act);
    (ii) Requests to change the correspondence address and owner's 
address;
    (iii) Appointment and/or revocation of power of attorney;
    (iv) Appointment and/or revocation of domestic representative;
    (v) Preliminary amendments;
    (vi) Amendments to allege use under section 1(c) of the Act or 
statements of use under section 1(d) of the Act;
    (vii) Request(s) for extensions of time to file a statement of use 
under section 1(d) of the Act; and
    (viii) Request(s) to delete a section 1(b) basis.
    (2) Continue to receive communications from the Office by 
electronic mail.
    (b) If an application does not meet the requirements of paragraph 
(a) of this section, the applicant must pay the fee required by Sec.  
2.6(a)(1)(iv).

[[Page 38774]]


0
5. Amend Sec.  2.53 to revise paragraph (a) to read as follows:


Sec.  2.53  Requirements for drawings filed through the TEAS.

* * * * *
    (a)(1) Standard character drawings in TEAS Plus applications filed 
under Sec.  2.22: If an applicant is filing a standard character 
drawing, the applicant must enter the mark in the appropriate field on 
the TEAS Plus form.
    (2) Standard character drawings in all other TEAS submissions: If 
an applicant is filing a standard character drawing, the applicant must 
either:
    (i) Enter the mark in the appropriate field on the TEAS form; or
    (ii) Attach a digitized image of the mark to the TEAS submission 
that meets the requirements of paragraph (c) of this section, and check 
the box to claim that the mark consists of standard characters.
* * * * *

PART 7--RULES OF PRACTICE IN FILINGS PURSUANT TO THE PROTOCOL 
RELATING TO THE MADRID AGREEMENT CONCERNING THE INTERNATIONAL 
REGISTRATION OF MARK

0
6. The authority citation for 37 CFR Part 7 continues to read as 
follows:

    Authority: 15 U.S.C. 1123, 35 U.S.C. 2, unless otherwise noted.


0
7. Amend Sec.  7.25 to revise paragraph (a) to read as follows:


Sec.  7.25  Sections of part 2 applicable to extension of protection.

    (a) Except for Sec. Sec.  2.22-2.23, 2.130-2.131, 2.160-2.166, 
2.168, 2.173, 2.175, 2.181-2.186 and 2.197, all sections in part 2 and 
all sections in part 10 of this chapter shall apply to an extension of 
protection of an international registration to the United States, 
including sections related to proceedings before the Trademark Trial 
and Appeal Board, unless otherwise stated.
* * * * *

    Dated: June 29, 2005.
Jon W. Dudas,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 05-13301 Filed 7-5-05; 8:45 am]
BILLING CODE 3510-16-P