Issue 3, July 2002

More Information about the Intellectual Property Group 

© 2002 
Bose McKinney & Evans LLP

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The U.S. Patent and Trademark Office (USPTO) is on a mission to become an e-government agency. The recent set of trademark rules designed to encourage electronic submission of applications and other filings, and to penalize paper submission, is part of that plan.

In May 2002, the USPTO proposed a rule to add a $50 surcharge whenever a person submits a paper filing instead of an electronic form available through the USPTO’s Trademark Electronic Application System (TEAS). In a rule effective June 23, 2002, the USPTO removed the advantage of filing paper applications and other documents via Express Mail (prior to the rule change, documents filed via Express Mail were considered to be filed as of the date of mailing, not the date of receipt). Taken together, these rule changes are intended to push trademark filers to use the TEAS e-filing system, accessible on the USPTO web site, www.uspto.gov.

Receiving and processing electronic filings is less labor intensive than dealing with paper filings, the USPTO claims. In addition, because the electronic data is tagged to permit direct transfer to the USPTO’s databases, the USPTO states that electronically received information tends to be both more accurate and more quickly available to the public.

What does this push for e-filing mean to a trademark owner? The changes resulting from these new rules will be changes in filing procedure only; the law which gives trademark owners certain rights remains unchanged. Depending on your experience with e-commerce and your level of computer sophistication, you may not find the procedural changes you see to be noteworthy.

Papers you receive from your trademark attorney are likely to have a different look, because they will be generated by the TEAS e-system. You may be asked to either affix your signature electronically (usually by typing your name set off by slashes, as in /john smith/) to the papers or to authorize your attorney to affix your electronic signature. You may be asked if you have the capability to e-mail a black and white line-drawing of your logo as a “GIF” or “JPG” image. If you do not have that capability, your attorney will need to be able transfer your paper logo drawings, as well as your labels or other “specimens” showing how you use your trademark, to an electronic format accepted by the TEAS system.

Time will tell whether e-filing has as many advantages over paper filing as the USPTO claims. Nevertheless, with a paper filing “penalty” on the horizon, trademark practitioners will be increasing their use of e-filing. Just as you adapt to a changing business environment to provide your customers with high quality services, your trademark attorneys will be incorporating e-filing into their trademark practice to serve you better.

This is a special edition of the Intellectual Property Update, a service of Bose McKinney & Evans LLP. The e-mail newsletter is distributed quarterly, with special updates distributed as news develops, in an effort to bring our clients up-to-date on the latest information in patent, trademark, and copyright law.  If you have any questions or concerns regarding your intellectual property matters, please contact us.