T he law firm of Oppedahl & Larson LLP offers comments in this docket.

A.  Making sure that any bad news is delivered by TEAS prior to filing, rather than by the Examining Attorney.

The proposed rulemaking specifies a long list of items which are proposed to be required in the application to qualify for the $275 fee.  These items include legal entity, citizenship, and a signature of the applicant to a verified statement.  If any of this long list of items turns out later to be missing or inadequate, the application will be required to pay a $50-per-class fee to preserve the application's pending status and its filing date.

It is suggested that the USPTO take such steps as will be needed to ensure that TEAS will, during validation, specifically flag any of these items if missing.  The validation message should make clear that the item is being flagged because it is needed for "TEAS Plus" status.  In other words, validation message should not merely say (as TEAS does now) that something is missing but that the filer can nonetheless obtain a filing date.

To state this design goal in a different way, it should be quite rare for an Examining Attorney ever to have to ask for the $50-per-class fee because of a missing item, because what should happen is that at filing time, TEAS would have caught the missing item. 

B.  Dealing with the unsupported "standard characters."

The USPTO has defined, at http://www.uspto.gov/teas/standardCharacterSet.html , the 272 so-called "standard characters" which may be used in a mark.  The USPTO further explains that TEAS is unable to receive, in the "standard character" text field, ninety of these "standard characters."  USPTO refers to these ninety characters as "unsupported" standard characters.  USPTO explains at http://teas.uspto.gov/V2.0/bas250/teahelp.htm#StandardCharacterFormat  that if a filer wishes to use one or more of the ninety "unsupported" characters, the user must provide the mark as a JPG image file, and must then check a box that indicates that despite the use of an image file, the mark is in "standard characters."

The proposed rulemaking, however, says that to qualify for the $275 fee, the filer who wishes to make a standard character claim must enter the mark in character form "in the appropriate field on the TEAS Plus form" and is forbidden from "attaching a digitized image of a mark in standard characters."  It would seem, then, that USPTO intends to deny a $275 filer from the ability to use any of the ninety "unsupported" standard characters.

As such, it is suggested that USPTO state this explicitly rather than indirectly.  USPTO should explicitly state in the rule that only 182 of the 272 standard characters are permitted to be used in a $275 application.

Alternatively, if USPTO does intend to permit a $275 filer to use any and all of the 272 standard characters, then either (a) the bug in TEAS that fails to support ninety of the characters must be fixed, or (b) filers who wish to use one or more of the ninety unsupported standard characters should be permitted to attach a digitized image of the mark in standard characters."

C.  Dealing with open-ended identifications of goods and services.

The proposed rule says that filers will not be able to type in an identification as a free-text field, but will instead be constrained to identifications copied (without modification) from the Acceptable Manual. 

A chief problem with this approach is that in many cases the identification in the Manual is open-ended.  Here are two examples:

Computer software for {specify the function of the programs, e.g., use in database management, use as a spreadsheet, word processing, etc. and, if software is content- or field-specific, the content or field of use) in class 9

Headgear, namely, {specify type, e.g., hats, caps}in class 25

P ractitioners are well aware that no matter how narrowly an applicant specifies the parenthetical information, the Examining Attorney is under standing orders always to force the applicant to narrow the identification further.  It is thus very important that (a) the filer be permitted to use such open-ended identifications when filing a $275 application, completing the parenthetical information in a free-text field, and (b) the rules need to make clear that the $50 may not be charged simply because the Examining Attorney is following the standing orders that any such identification must always be narrowed during prosecution.

D.  The requirement that all post-filing communications be through TEAS.

The proposed rule contemplates that the application will lose TEAS-Plus status (that is, that the $50-per-fee penalty will be required) if the filer communicates a response to office action by any means other than TEAS.

The problem with this is that TEAS does not accommodate all of the types of communications which a filer might need to make when responding to an office action.  As one example, TEAS will not permit the filing of a response to office action on the day the office action is emailed, but instead forces a filer to wait at least until the next day and sometimes longer.   This is a non-negligible problem since the rule also proposes to set a far shorter response period (two months instead of six months).  The "dead time" between when an office action is emailed and when the filer is capable of responding through TEAS must be reduced or eliminated.

As another example, sometimes an Examining Attorney may require that a certified copy of a foreign trademark application or registration be supplied, and TEAS lacks any mechanism for physical delivery of the certified copy to the USPTO.  Finally, sometimes evidence (e.g. of secondary meaning) is not in a form that permits ready submission through TEAS;  examples include television commercials and radio commercials. 

The rule should state that a filer will not lose TEAS-Plus status for doing a non-electronic filing in those cases where TEAS fails to provide an electronic way to do such a filing.