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TEAS is very user friendly and electronic filing is the way go. It saves time and money. Nancy J. MacDonald _______________________________________________________________________ This is to request a clarification on the above notice. Will power outages, server/technical difficulties (either at the PTO or on the user's end), and similar temporary obstacles to electronic filing qualify to permit one to file an otherwise prohibited paper document in a trademark application, as long as it is accompanied by the required affidavit under proposed Rule 2.22? In other words, for an affidavit under Rule 2.22, will such temporary obstacles qualify to give an applicant the right to aver that he or she "does not have access to TEAS" so that the affidavit will be effective to permit the paper filing? If so, it would be nice to see the final rule state as much. Thanks in advance. Regards, _____________________________________________________________________ As a comment on the proposed mandatory electronic filing for trademarks with the United States Patent and Trademark Office (PTO), such requirements are opposite of "citizen centric" as the PTO states that President Bush wishes. D. Brit Nelson _______________________________________________________________________ Assuming mandatory filing rules, how can I as an attorney file a trademark application for my client if I can't sign the application on behalf of my client? Currently I prepare it - mail it to them for their signature - and then mail it in to the PTO. How will I be able to prepare such documents in the future? Richard L. Morris, Jr., M.B.A.,
J.D. _______________________________________________________________________ A better idea may be to encourage electronic filings by lowering the filing fees if filed electronically. Richard L. Morris, Jr., M.B.A.,
J.D. _______________________________________________________________________ This [new signature method] is so much more complicated and time consuming. I'd have to raise my rates (I charge a fixed fee for trademark applications). It would also be a managerial nightmare. Richard L. Morris, Jr., M.B.A.,
J.D. _______________________________________________________________________ With regard to the recent Trademark Office proposal to make electronic filing of trademark documents mandatory (66 Fed. Reg. 45792), should the rule be promulgated, when is the earliest date on which you foresee its implementation (and exclusion of paper filings)? Christine L. Wettach _______________________________________________________________________ Although I find the use of the internet with the PTO extremely useful, time saving and convenient, I do not expect or desire to have it replace a paper based registration and communication process. My experience is that the combined system provides the balance nd tracking, yes, duplication (!) that is unfortunately necessary to the legal practitioner. The elimination of a paper trail seems perilously exposed. I suspect that the all electronic system may be considered discriminatory to the non-computer connected public, just at the time when your TESS features and TEAS have added accessability to the public. Very truly yours, JEFFREY D. COHEN _______________________________________________________________________ As an attorney who files more than 200 applications per year, I have been very pleased with my experience filing electronically. Craig Morris should be commended for leading this effort and his personal approach to easing the Bar into its usage is greatly appreciated. I have spoken with him on at least two instances. I have filed electronically for about 95% of the applications filed in the last 11 months. Having said that, there have been occasions when I have been forced to file in hard copy by Express Mail. These usually surround instances when creating an electronic drawing or specimen have not been easy to obtain, given the .gif and .jpeg format restrictions of those documents. Why not also accept .pdf formatted specimens and drawings? Most scanners produce documents in .pdf, not .gif or .jpeg and many electronic specimens/drawings from clients are in .pdf format. I have found it cumbersome to convert those files. Unless .pdf is accepted for specimens and drawings, I am not thrilled with the proposed rule changes. If .pdf is not made an acceptable format, why not permit paper filings with an additional filing fee (perhaps $25 or $50) to cover the cost of processing the paper? Scott S. Havlick 303 473-2710 _______________________________________________________________________ We are a mid-sized exclusively IP firm in Portland, Or and are opposed to the captioned Rule unless there is a provision for safeguarding rights in the event of a computer system crash that disables the transmission of e-mail, which would amount to a temporary technical incapability to use TEAS. We'd also appreciate learning whether "mandatory" is intended to mean "exclusive," i.e., whether the Office will ONLY accept e-filing for the items noted. des@chernofflaw.com _______________________________________________________________________ Ultimately, mandatory TEAS is a desirable idea. However, I urge great effort to address two problems. The problems are: (1) the history of the trademark side of the USPTO in both losing an extraordinary number of paper documents submitted to it and failing to send many documents which the web site says were sent - this is the "clerically challenged" characteristic of the trademark side of the USPTO; and (2) the problem of making TEAS be reasonably practical for small law firms which can't afford a lot of specialized training but which want to be sure that correct documents are submitted. Recommendations: Problem (1). There should be provisions for duplicative ways for a submitting attorney to obtain proof that an electronic document was submitted and procedures for the USPTO to accept such proof when the USPTO loses a record of the documents submission without requiring clients to pay for petition fees and lawyer services when the USPTO loses something. For example: (a) sending a confirming email receipt to the attorney showing all the information submitted within 24 hours. (b) an immediate html receipt which can be printed immediately following submission. (c) a simple procedure for submission of a simple declaration by an attorney who tried to submit a document electronically but couldn't or it didn't make it or was lost. This would be a procedure which would be sufficient to be accepted by the office as timely filing of the document even when the office has no record of it. Perhaps this could be a fax and or an express mail submission and include a representation that he tried and the date and time of doing so. The office can decide what evidence would be needed but it should be something that does not require a client to pay significant money to make up for loss of a document by the USPTO or the inoperativeness of TEAS or the attorney's computer or software. Problem (2). A secretary should be able to prepare a document for submission, but print it before submitting it so an attorney can review it before it is submitted and then be able to modify it, without the necessity of reinserting all the same data which was correct the first time. The document should be able to be submitted on a later day. In other words, the document should be able to be saved, modified off-line and then, when ready, the secretary should be able to go on line and submit it without recomposing it. That way the attorney knows that what he or she approved was what was sent. Frank H. Foster _______________________________________________________________________ My experience is that electronic filing is difficult in general. Example: most marks are not typed, block capital letters and require excellent scanning or digital photographic equipment; the requirement for this equipment is beyond "mere" access to the Internet. In addition, rules for specimens are not clear; they must be amended so that specimens are treated virtually identically to that of a drawing page (when used) for an application: scanning or digitized photography. The latter raises the same negative issue as the drawing page problem. Thank you. _______________________________________________________________________ Our firm files the majority of our marks via TEAS, however, I have some concern about the potential new requirement to file electronically. On occasion, we have had actual use marks and Statements of Use where the specimens are not clearly reproducible by scanning and in those instances we have filed the documents via Express Mail. Another concern that comes to mind is with regard to the occasional lapses in Internet service. An outage can occur at any time without warning and requiring electronic filing would cause a hardship in this situation. Elizabeth McArthur _______________________________________________________________________ The PTO is proposing to require that all documents for which forms are available be filed via TEAS. This is a decision I applaud. The PTO is also providing that there will be exceptions for individuals either without access or without the technical capability to use TEAS. I believe this is also quite fair. However, it seems to me that changing the rule for 1.10 so that all filings made by 1.10 where forms are available in TEAS will be considered filed on the day received is a bit harsh, especially in view of the fact that the PTO has already made provisions for exceptions to the TEAS filings. I would think a fair rendition of the rule that gets at what the PTO is trying to accomplish would be to say that where a form is available for filing in TEAS and is not, it is considering filed on the day received except where the person establishes that he falls within the exception. In those instances, the form will be considered filed on the day it was deposited. Thanks and keep up the good work. Cecily Anne Snyder _______________________________________________________________________ I am a corporate US registered patent attorney who conducts a small amount of trademark business with the USPTO. I am against the proposed rules that will make certain electronic trademark filings mandatory. Although computer literate, I still do not have confidence in sending valuable information to the USPTO via computer. We do not have 100% assurance that what we send is what you will get. (The PAIR site gives many practitioners nightmares.) The electronic system should remain optional for the time being. As we all get comfortable with it, e-filing could be become mandatory somewhere down the road. I resent that this paradigm shift is now being rammed down our throats. I appreciate the paper load is getting out of hand. However, if the USPTO wishes to encourage electronic filings then offer a discount. Respectfully submitted, Edward A. Steen ______________________________________________________________________ Regarding the proposed rules on Mandatory Electronic Filing for Trademarks, I have the following comments: 1) The proposed rules will impart an inordinate burden on sole practitioners and small law offices ("small practitioners") in that the rules apparently require a deposit account to be maintained in order to pay the fees. Many small practitioners do not have the abundance of cash necessary to maintain a deposit account. Further, maintaining a deposit account adds additional administrative burdens to the small practitioner office. While payment by credit card may be an option, this also imposes an additional burden on small practitioners, particularly in administrative costs, as well as interest costs if a balance is maintained on the credit card. The rules appear to be directly solely to reducing the USPTO's workload, without any consideration of the impact it will have on small practitioners. I propose that the rules allow fees to be paid separately by mail, and within a specified time after filing (such as 30 days) using a certificate of mailing. 2) The signature requirements (37 CFR 1.4) for electronic filing present an additional administrative burden on small practitioners in that we will now be required to maintain additional copies of all paperwork. That is, we will need to maintain the as-filed copy, plus a signed original. While this burden is imposed on all practitioners, it will be felt most keenly by small practitioners where administrative costs consume a disproportionate portion of our income. While these costs can conceivably be passed along to the client, this puts the small practitioner at a competitive disadvantage with respect to the large practitioners who are better able to absorb the costs. One solution is to offer reduced fees for sole practitioners and small law offices. 3) The requirements to file an electronic drawing of a logo or stylized mark in jpeg or gif format adds an additional burden and additional cost. Further, applicants who are individuals or small entities often do not have software for viewing such files. Further, many times the example of the mark provided to the practitioner is in the form of a specimen. The practitioner must then reduce the specimen to an electronic format. This is usually done using the services of a professional draftsman. Most professional draftsmen do hot have the ability to put the figure in a jpeg or gif format, but only in an AutoCAD format. This typically requires manual cut-and-paste (literally) on the part of the practitioner in order to develop the formal drawing to be filed with the application. The rules will now make the process very costly, if not virtually impossible in some instances. I propose allowing drawings to be filed separately by mail where the drawing cannot easily be presented in a jpeg of gif format. Thank you for you time. John S. Reid ______________________________________________________________________ If the proposed electronic filing only rules are adopted, provision should be made for payment of fees by check within 10(?) days after electronic filing with certificate of mailing and no penalty, petition fee or surcharge. Ralph F. Crandell ______________________________________________________________________ I am concerned about the impact of the rule on small law firms. It is my understanding that the vast majority of law firms in America are small firms. In my own case, I have had success with e-filing word mark applications. I have also had success with using the new system where I email a draft application to the client, the client "signs" it and emails it back to me for e-filing. But I have not yet figured out how to attach specimens for design mark applications. I have tried to attach specimens but the USPTO computer rejects the attempt, indicating that the specimens are in the wrong format. These are the types of issues that are difficult for small firms to work through. My "MIS Department" is my husband/law partner, and he hasn't had time to figure out the specimen problem. Perhaps the e-filing system could be changed so that I could submit specimens consisting of an attachment in Word 97/2000 format. Then I would know how to submit specimens. I hope these comments are helpful. I realize that I may sound like a technological ignoramus, but it is hard for small firm lawyers to spend the time and money to deal with computer systems and training. That's just the reality. Anne F. Downey, Esq. ______________________________________________________________________ I am a trademark practitioner and am the attorney of record on approximately 620 trademark files in your database. I strongly object to mandatory electronic filing under the current TEAS system. Because of the signature and specimen requirements, filing an application under the current TEAS system is much more time-consuming than filing a traditional paper application. I am currently a low-cost provider of registration services (with rates at approximately 40% below the national average reported in the AIPLA economic survey.) Requiring the use of the current TEAS system would require me to substantially increase my fees to compensate for the increased burden. I also have several clients who would be infuriated by the complexity of providing an electronic signature. My objections only apply to the current TEAS system, not to electronic filing in general. If the TEAS system were revised to eliminate the need for a signature and scanning of specimens, I believe the PTO's stated interest in improving data entry (an interest I strongly support) could be accomplished without substantially increasing the burden on practitioners. (If the signature requirement is not removed from the statute, a signed declaration could be supplied later, as is done with paper applications.) ______________________________________________________________________ Please permit me to register a strenuous objection to the proposal mandating electronic filing. So long as signatures and specimens are required, electronic filing is convenient only for corporations filing in-house. There is only inconvenience and the possibility of error for outside attorneys who must make two submissions for an application or declaration of use. Eliminating the signature requirement and the requirement for specimens would facilitate electronic filing, but open the way for a host of other problems: vitiating the presumption of validity of a registration, precluding proper examination, depriving potential opposers of valuable information. Roberta Jacobs-Meadway ______________________________________________________________________ The United States Patent and Trademark Office has proposed to
amend its rules to make electronic filing of trademark documents mandatory.
And subject to certain exceptions, all documents for which an electronic form
is available in TEAS, will have to be filed through TEAS rather than through
the mail or by hand delivery. In addition, the Office proposes to amend its
rule concerning the use of U.S. Postal Service "Express Mail Post Office
to Addressee" service, to eliminate the filing of any document by Express
Mail for which an electronic form is currently available in TEAS. ______________________________________________________________________ I believe that filing should be as 'technology neutral' as possible. I understand efficiency and perhaps a surcharge may be appropriate for non-emailed application....or put better, a discount for increased efficiency if you file by e-mail. Your right to file should not be technology dependant. Thank you. ______________________________________________________________________ I write in response to the PTO's request for comment on the proposed rule change, mandating e-filings of trademark applications and other documents and doing away with specimens. The purpose of a signature on the listed documents is to ascertain who, on behalf of the applicant, made the representations. In any inter-parte proceeding (either before the PTO or the courts), this information can be vitally important. Also, the signatory requirement under oath stands in the way of fraudulent filings by not only applicants and registrants but also third parties. It is arguably quite easy for someone to say that their name may have been typed on a document but they have no knowledge of who did it. The withdrawal of the requirement for specimens is also a very serious matter. Examining attorneys often reject applications based upon the failure of an applicant (or continuation or renewal applicant) to make an appropriate trademark use. Indeed, the PTO Rules now provide for a further examination based upon use of ITU application, a step that will be meaningless if this change goes into effect. Further, in litigation, oppositions, and cancellation proceedings the nature of the use of the mark is an important, often crucial, consideration. In litigation, the evidence of such use is often lost by the registrant but maintained by the PTO. Such a drastic change in the rules may fit bureaucratic convenience but hardly serves the law. For the foregoing, we oppose the proposed change. Respectfully submitted, ____________________________________________________________________ As a practitioner of some forty years I am writing in opposition to make mandatory the filing of all documents for which forms are currently available via TEAS. I suggest that the PTO encourage electronic filing. I suggest that the PTO devote more time and effort to perfecting the handling of electronic materials, that is, make the system more user friendly and clear up existing problems within the PTO. Practitioners will then desire to make use of electronic filing. At present there appear to be too many glitches, with potential loss of rights. Very truly yours, Seymour Rothstein, 495 Clavey Court, Highland Park, Illinois 60035 P.S. I have used my home address and am writing in behalf of myself and not my firm. ____________________________________________________________________ Dear Sirs: Please consider the following comments with reference to the above notice. I encourage all efforts by the USPTO to improve efficiency and response; and, I applaud the USPTO's efforts to aggressively move forward to an electronic office. As outside counsel, I have desired but, for several reasons, have been unable to embrace TEAS as a system for initially filing trademark applications. (I use the term "trademark" to refer to trademarks, service marks, certification marks and collective marks.) However, TEAS can easily be made more attractive for outside counsel by addressing these issues in this rulemaking. TBDs/NBDs The Trademark Law Treaty Implementation Act (the "TLTIA") added a very significant and valuable feature to the Lanham Act: the ability to file a trademark application without an oath or declaration (i.e., without declaring a basis under 1(a) or 1(b)). I refer to such an applications as a TBD (To Be Declared) or NBD (No Basis Declared) application. Given the substantial Lanham Act benefits which accrue as of the filing date (in particular, nationwide constructive use), as outside counsel, I seek to acquire the earliest filing date as is possible under the circumstances. Prior to the TLTIA, I, as outside counsel, experienced delays (typically several days to perhaps a month) in obtaining the client's signature on an ITU application (longer for USE applications given the diligence on identifying first dates of use). Since the client, and not the attorney, should sign the declaration, filing an application prior to the TLTIA was dependent upon obtaining the client's signature. With the advent of the TLTIA and accompanying regulations, I can now start the application with the USPTO and not be dependent on the client for a signature. Based on my experience with TEAS (and, with consideration for any "cockpit error"), I understand that TEAS will not permit the filing of a TBD. TEAS forces the user to select between either an ITU or USE application. So, to the extent that the current rulemaking would mandate the use of TEAS, such rulemaking would effectively deny the user community the ability to file a TBD. So, to the extent that the current rulemaking would mandate the use of TEAS, such rulemaking denies the user community a most valuable filing feature that was first made available by the TLTIA. Please address this in your rulemaking to insure that, if TEAS is mandatory, TBDs will be accommodated; and, that, in the absence of such accommodation, a paper filing (whether normal or by Rule 10 US Express Mail) will be allowed without any penalty or surcharge. I respectfully suggest that, as TEAS does not currently employ the TBD facility, the new rules should expressly address a contemplated change in TEAS, allowing paper filings in the interim. Form of Declaration: Statutory Compliance The TLTIA amended both Sections 1(a) and 1(b) of the Lanham Act. In particular, Sections 1(a)(3)(C) and 1(b)(3)(C) appear to require the declarant to state that, to the best of the verifier's knowledge and belief, the "facts recited in the application are accurate." This statement does not appear in the standard form declaration generated by TEAS. This is another reason that I have been reluctant to use TEAS. Also, a TEAS generated ITU declaration, while employing the phrase "believes the applicant entitled to use" as required by Section 1(b)(3)(A), does not employ the statement "bona fide intention to use" as set forth in Section 1(b)(3)(B). This appears to be a required phrase. While I understand that the Director can prescribe the "form" of the verified statement, I am concerned that, in exercising such authority, the Director can not vary from the literal requirements of the statute. Again, both of these noncompliance issues can be addressed in the rulemaking. E-Signature Routing Prior to the June enhancements to TEAS, it was very awkward to use electronic filing and obtain client signatures. The relatively new e-signature feature, which allows applications to be generated by counsel (who are, presumably, remote from the client) and then signed by the client via an e-mail notice issued and coordinated by the USPTO (given access to a unique web site for the client's signature), transforms TEAS into a practical tool for outside counsel. Without this feature, mandatory electronic filing would be very awkward and, essentially, impractical for outside counsel (or even inside counsel who are remote form their "clients"). I respectfully suggest that the rulemaking make mandatory electronic filings expressly contingent on the continued availability of the e-signature feature. Rule 10 and US Express Mail For a variety of reasons, applicants may desire, even if they have the capability to file electronically, to file in paper form. Rather than abrogate the use of Rule 10, I suggest that Rule 10 remain with the caveat that anyone using Rule 10 (excluding those persons already exempt under new rule 2.2), be required to pay a hefty surcharge (perhaps double the filing fee) to use Rule 10. Additional Statements TEAS currently permits certain "canned" statements to be added to the application. The current menu of statements does not include the traditional statement used to recite the circumstance where applicant's ancestor-in-title adopted the mark. In a system where electronic filing was an option, such a statement could be added and filed in traditional paper form. In moving to a mandatory system, there appears to be a need for some flexibility in adding statements to the standard form (in addition to the "canned statements"). So, as part of the rulemaking, please consider adding a rule that requires TEAS to implement a free form statement area to address any special circumstances. While I observe that the current suite of "canned statements" covers the most frequently used additional statements, I can not say that it covers everything (or, would cover issues that might arise in the future). Thus, as a "safety valve" in a mandatory electronic filing system, I suggest the rules mandate the implementation of a "free form" area in TEAS. I thank you for your respectful consideration of these comments. If I can provide any further information or assistance, please call or reply. Raymond G. Areaux ____________________________________________________________________ I am submitting these comments in response to the Notice of Proposed Rulemaking published in the August 30, 2001, Federal Register that would make e-filing of most trademark documents mandatory. Commissioner Chasser and the rest of the PTO staff have done a fabulous job making e-filing a reality. It is a wonderful system and one that we use at every opportunity. Everyone should be encouraged to use it. This being said, I am concerned that making e-filing mandatory could lead to problems. There have been times when the TEAS system has not functioned properly, or our corporate servers have been down (such as during the recent NIMBA virus outbreak.) In these situations, we were unable to make e-filings and had to resort to snail mail. In light of the fact that web-based systems can fail at any time without any notice, I think it would be unfairly penalize a trademark owner or applicant to require them to file electronically when the only medium for making the filing may be unavailable for reasons beyond their control. I realize that there are procedures for requesting acceptance of some late filings; however, I believe the better way to address this concern would be to allow the acceptance of paper filings if the person filing the documents states in a declaration that the document was not filed electronically due to an unforeseen technical issue. Thank you for your consideration. Respectfully submitted, Paul W. Reidl ____________________________________________________________________ This constitutes the comments of R. Kunstadt, P.C. on the captioned proposal for mandatory electronic filing of trademark documents. R. Kunstadt, P.C. is an intellectual property firm located in New York, New York. We are active in filing trademarks on behalf of clients in the pharmaceutical, clothing, computer, beverage and other industries, in the United States and foreign countries. These comments represent the opinion of the firm and the undersigned, but are not presented on behalf of any clients of the firm. SUMMARY Mandatory electronic filing, as distinguished from voluntary filing, is inappropriate at this time. Mandatory electronic filing should only be considered when reliability and security issues facing Internet transmission have been overcome, and when the Trademark Office develops an interface which is compatible with industry-standard office automation programs. The Internet is not sufficiently reliable to make it the only means of communication with the Trademark Office. The Internet is plagued by viruses and hackers. Security of transmission via the Internet cannot be assured by present technology. Reliable Internet connections cannot even be assured; our connection went down at the time of the September 11th WTC attacks. The specific ETEAS interface used by the Trademark Office, appears to be designed for an inexperienced trademark applicant. It is not compatible with industry-standard office automation programs. Many firms (like ours) which are active on behalf of a large number of sophisticated clients, have made significant investments in state-of-the-art office automation technology. Requiring trademark applications to be prepared and filed by the present ETEAS system, would represent a technological step backward. The Trademark Office could consider requiring filing in one of two ways: either electronically (using the ETEAS system); or in print using a form like that generated by the PRINTEAS system. The ETEAS form can only be filled in word-by-word using a computer keyboard like a manual typewriter. It is not designed to take advantage of industry-standard office automation systems based on relational databases. The PRINTEAS form can easily be prepared by any user, even with only the most basic office equipment such as a manual typewriter. We are able to generate a PRINTEAS trademark application automatically, on a push of a button, by using our office automation database. The PRINTEAS system, therefore, is suitable for use both by unsophisticated users, and by users of advanced office automation technology. A further advantage of the PRINTEAS systems is that it is not subject to infection by viruses or manipulation by hackers. Attempts to introduce viruses or to hack the system can be detected because the PRINTEAS document is easily human-readable. The Office can see a non-standard PRINTEAS form containing malicious code, and can decline to scan it. Our firm has had excellent results over the past several years, using the PRINTEAS codes. Mistakes by the Office requiring correction of the filing receipt have been rare. BACKGROUND These comments were prepared by the undersigned Robert M. Kunstadt, with the assistance of R. Kunstadt, P.C. staff. I am a graduate of Yale University and the UCLA School of Law. I studied intellectual property law under the late Professor Mel Nimmer at UCLA. I held a post-graduate research fellowship at the Max Planck Institute for Patent, Copyright and Competition Law in Munich, Germany from 1975 to 1977. In 1978, I commenced work as an associate at the New York office of the IP firm Pennie & Edmonds. I worked at Pennie & Edmonds, in the capacity of associate and subsequently partner, until 1997. In 1997, I established the present firm, R. Kunstadt, P.C. in order to leverage the benefits of new technology to provide prompt and efficient service to intellectual property clients. Our small law office (total staff of five) has invested over $20,000 in office automation technology. Our principal office automation program is PROLAW. PROLAW is a SQL database which works on the "one-write" principle, as do many relational databases. When data is entered into the program for any purpose, it is immediately accessible at the press of a button, to be reused for any other purpose. For example, when a trademark application is prepared we do not re-type the client's name, address, state of incorporation, etc. All that information resides in the "contacts" module of the database, and is available for use in the "matters" module for the preparation of a trademark application. Similarly, the database fields for international class, goods, client address of record, etc., are filled in once for an application. The application form is then automatically generated by PROLAW, at the push of a button, drawing upon the information resident in the database. In the past, trademark applications were prepared using a word processing program such as WordPerfect. Law firms kept separate databases, either paper databases or computerized, which duplicated the information in the trademark applications. This led to inefficiency, because errors crept in due to discrepancies between the information typed into the word-processed trademark application and the information that had been keyed into the database. Significant staff time was required to weed out these errors and correct the database. This adversely impacted upon client service and increased the cost of trademark legal services to clients, due to the need to pay personnel to correct the database. The great advantage of a state-of-the-art office automation database such as PROLAW is that a managing attorney can be assured that having once checked the data, it will be correctly replicated for all purposes throughout the program and in any application form it generates. This leads to a great savings of time and consequent savings for our clients. In particular, using the PROLAW office automation program, we can be assured that there is a perfect correspondence between the trademark information contained in our database, and the information printed on the applications we submit to the Trademark Office. HOW OUR OFFICE USES THE PRINTEAS SYSTEM We set up our PROLAW database to simulate the PRINTEAS forms generated by the Trademark Office web-site. These forms are very simple. Basically, they consist of a field name coded within carets, followed by the data for that field. Information which is not to be scanned by the Office is separated by a tilde character. A sample of such a form is attached as Exhibit A. Because the PRINTEAS form utilizes only ascii characters and is easily human readable, we had no difficulty setting up our PROLAW system to automatically insert the data from our database, into the appropriate coded fields of the PRINTEAS form. Our office has had excellent success utilizing these forms for filing trademark applications and other documents (such as extensions of time and renewals). We hardly ever get an inaccurate filing receipt anymore. Before we moved to this system, almost one half of trademark applications resulted in inaccurate filing receipts, with consequent need for correction. We do not know exactly how the Trademark Office processes the PRINTEAS form. However, we expect it is scanned at the Office, and then checked by an operator to insure accurate scanning. However it is done, the Office may be assured that the process works almost flawlessly. We are very happy with the way the Office has been processing our trademark applications and see no need for improvement in this respect. Indeed, what we suggest is that if the Office is interested in reducing the need for manually keying data for trademark applications, the Office should require that all paper applications be submitted using the PRINTEAS coded fields. Anybody can prepare an application using these fields, even without any sophisticated office automation equipment. Even a manual typewriter would suffice for this purpose. Therefore, it would not be any great imposition upon the public for the Office to require that the PRINTEAS coded fields be implemented on all trademark applications and other documents. DEFICIENCIES OF THE PROPOSED MANDATORY ETEAS SYSTEM The ETEAS system has been utilized on a voluntary experimental basis for the past several years. We understand that many users of the system are satisfied with its operation. When the system was first made available, we inspected it and determined that it was not appropriate for the needs of our office. Therefore, we have not utilized the system. It would be incorrect for the Office to rely only upon feedback from users of the ETEAS application indicating that they are satisfied, since there undoubtedly are a large number of persons who decided not to use the system because they found it, upon inspection, to be unsuitable. The ETEAS system seems to be designed to facilitate filing of trademark applications by unsophisticated individual users who had never filed an application before. It contains a "wizard" interface to guide an unsophisticated user in filling out the trademark application form. This system is undoubtedly a benefit to users of that type, and so should be continued on a voluntary basis. However, the defect of the ETEAS system from the point of view of our firm, and undoubtedly many other sophisticated users, is that it has no proper interface to any industry-standard office automation program. Sophisticated users do not fill out trademark applications by typing individual words into blanks, one at a time, the way the ETEAS system requires one to work. Sophisticated users use powerful databases which generate an application form on the push of a button. Therefore, to require sophisticated users to file their applications by means of the ETEAS system, would effectively put the trademark profession back by forty years. Back in the 1960s, the state of the art was to fill out a trademark application form word-by-word on an IBM electric typewriter. The ETEAS system works the same way. Therefore, ETEAS could not be considered progress in office automation by any stretch of the imagination. The ETEAS form makes extensive use of HTML coding for page layout purposes (grids, colors, fonts, etc.) and also to implement Microsoft-style "controls" such as radio buttons and pull-down boxes. Hence, it is incompatible with standard office automation programs. While such programs routinely can perform a "mail-merge" operation to insert text data into pre-coded fields (as are found on the Office's PRINTEAS form), they do not presently have the ability to automatically manipulate HTML controls such as radio buttons and pull-downs. While such automation might theoretically be possible by the creation of a custom Visual Basic interface unique to each office automation program, to impose on users the burden of such complex programming activity is unwarranted and indeed unnecessary. There is no functional need for the Office to employ a system as complexly-coded as ETEAS. The far simpler PRINTEAS codes are already compatible with standard office automation programs using mail-merge technology, and have proven themselves in our experience to be fully functional to achieve the desired purpose of flawless input to the Office's database. While ETEAS has a "glitzier" interface, we submit that function, not form, should be the over-riding concern in designing a practical system. A key functional need which ETEAS overlooks is compatibility with industry-standard office automation programs. PRINTEAS codes, in contrast, meet that need perfectly. It would undoubtedly be possible to develop electronic filing systems that would be compatible with state-of-the-art office automation systems. Indeed, a very simple such system would merely require the user to email the ascii text of the PRINTEAS form to the Trademark Office. The Office could then electronically input the PRINTEAS form by recognition of the coded field headers, into the Office's database. Such a system would be entirely compatible with any office automation system which can generate a simple ascii text record. To maximize the potential for compatibility with the diverse office automation systems being used, we suggest that the Office consider to use the most "plain vanilla" interface possible: simple ascii text without HTML formatting codes. In this respect, the PRINTEAS form would be a perfectly satisfactory model. SECURITY ISSUES OF ONLINE COMMERCE Computer World of September 24, 2001, page 1, reported on the NIMDA worm having infected numerous Internet servers. This worm is capable of spreading not only by email, but also by web browsers such as those utilized by the Office's ETEAS system. The worm is capable of installing a "back door" onto an infected system, leaving the system vulnerable to further hacker attacks. Standard anti-virus software available at the time the worm struck in August 2001, failed to keep it from spreading. Indeed, even the most careful users of anti-virus software face risks from use of the Internet, since there always is a lag between the time when a new worm or virus is detected, and the anti-virus software can be updated. For that reason, this firm does not permit our network to be connected directly to the Internet. All Internet communication is conducted from a separate, standalone terminal. We view this as a necessary measure to protect the security of valuable intellectual property information stored on our network. Therefore, it seems inappropriate to require all users of Trademark Office services, to operate only via the Internet. Until such time as better security can be assured for Internet transactions, the Office would be forcing users to bear risks which many people do not wish to incur. Furthermore, the Internet is not even a reliable means for communication. It is subject to periodic outages and service interruptions, not only due to malicious hacker attacks but also due to simple technical difficulties at Internet service providers. If we were required to conduct all business with the Trademark Office only by the Internet, and if our Internet service provider had an outage or other technical difficulty, we could be unable to service our clients. Since often there are critical deadlines which must be met in order to preserve our clients' trademark rights, such an unanticipated and uncontrollable technical difficulty could prejudice our clients' rights. Indeed, subsequent to the terrorist attack on the World Trade Center here in New York City, we were not able to get a connection through Compuserve, our usual Internet service provider. For the first several days, there was no phone service at all. Then, we were able to get a connection, but only by dialing into Compuserve's 800 number. Given the United States' declared war on terrorism, the Internet must be viewed as less reliable than ever. We can expect instances of "cyber-terrorism" which will adversely impact availability of service on the Internet. While the Trademark Office itself may not be a specific terrorist target, terrorist attempts to interfere with commerce in the United States by "Denial of Service" attacks targeting the Internet as a whole, would adversely impact on the Trademark Office's ability to provide service, if the sole means of communication with the Office were the Internet. Therefore, if the Office does indeed wish to institute mandatory e-filing, we recommend that the Internet not be the only means of electronic access. The Office should maintain a modem bank permitting direct dialin connection to the Office. A direct dialin connection is more secure than the public Internet. It would permit the Office to trace the origin of malicious calls. THE NEED FOR ASSURED PROOF OF SATISFACTORY FILING Suppose one submits a credit card authorization to support an application over the Internet. There is a lag between the submission of the authorization, and the receipt of an acknowledgement that the charge has been duly processed. During that lag time, many things can go wrong. The Internet is not a flawless means of communication. Therefore, if any of the multitude of servers which process the request along the way, drops or garbles the request, it would not be correctly received and acknowledged. During that time, the request is in limbo. If no proper acknowledgment comes back, the user faces a conundrum. Should the user assume that the request was not received, so it needs to be re-sent? Or should the user assume that it will be received in due course, and do nothing? If the user assumes the request was not received and re-sends it, the user runs a risk of incurring duplicate charges on his or her credit card. On the other hand, if the user does nothing, than the user may never get the desired result. This conundrum is particularly acute for a law firm, which assumes the responsibility for making filings on behalf of its clients. A law firm cannot simply sit back and hope that things would work out, if no acknowledgement is received. The law firm must act to meet deadlines, even if this involves the risk of incurring duplicate charges. This particular risk does not seem to be mitigated by the Trademark Office's ETEAS system. Suppose a law firm has to file an extension of time for a statement of use, and the client gives the instructions only on the last day. The law firm uses the ETEAS system to submit the request. However, at the close of business no acknowledgment has been received from the Trademark Office. What should the law firm do? If the law firm does nothing, it runs the risk that the deadline would be missed. Therefore, the law firm has no choice but to re-submit the request. This may result in a duplicate charge upon the law firm's credit card or deposit account. It could take months to sort this situation out; if the Office would even grant a refund, which is not clear under the present system. Any system which relies upon electronic payments being made over an unreliable communications system such as the Internet, must be created in such a way as to prevent this conundrum from occurring. One way this can be attempted, is to assign a tracking number to a transaction at the very start of the transaction, before any charges are incurred. Given this tracking number, the user can later inquire into the fate of the transaction, if at the end of the transaction, no proper acknowledgment has been received. The Office will have to be willing to accept these tracking numbers in the same way that it currently accepts Express Mail receipt numbers, as proof that the necessary filings were made. Otherwise, law firms would have no proper way to demonstrate that they fulfilled their obligation to make timely filings on behalf of their clients, if communication difficulties and/or other difficulties at the Internet service provider, on the Internet itself or at the Trademark Office prevented proper completion of the transaction in due time. This is the reason why at present, experienced users rely upon Express Mail as proof of filing. Given an Express Mail filing receipt with an Express Mail number and "date in", one can confidently leave work at the end of the day with assurance that one's duty to make the necessary timely filing on behalf of a client has been satisfied, even if the Express Mail package is later lost in transit. Any system which cannot provide that assurance, must be considered unacceptable by properly-informed users of Trademark Office services. Respectfully submitted, R. Kunstadt, P.C. Enclosure follows: ~UNITED STATES PATENT AND TRADEMARK
OFFICE TO THE ASSISTANT COMMISSIONER FOR
TRADEMARKS:~ <APPLICANT ENTITY INFORMATION>~[select
only one]~ <TRADEMARK/SERVICE MARK INFORMATION> <Mark>TEST TRADEMARK <BASIS FOR FILING AND GOODS/SERVICES INFORMATION>~[select only those Sections that are appropriate and delete the others]~ <Intent to Use: Section 1(b)> <FEE INFORMATION> <SIGNATURE INFORMATION> DECLARATION. The undersigned being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001 and that such willful false statements and the like may jeopardize the validity of the application or any resulting registration, declares that he/she is properly authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the owner of the mark sought to be registered, or, if the application is being filed under 15 U.S.C. 1051(b), he/she believes the applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods and/or services of such other person, to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true and all statements made on information and belief are believed to be true. POWER OF ATTORNEY. The undersigned hereby appoints Robert M. Kunstadt, of the bar of the State of New York, of the firm R. Kunstadt, P.C., located at 729 Seventh Avenue, New York, New York 10019, its attorney to prosecute this application for registration, to transact all business in the Patent and Trademark Office in connection herewith, and to receive the certificate of registration. All correspondence is to be addressed to the firm. SIGNATURE: _________________________________~ <Date> <CONTACT INFORMATION> _____________________________________________________ While we do understand the position of the USPTO in relation to the mounting number of new trademark applications, we must comment that after all, the USPTO is a government agency and is not a for-profit company. If the applications call for more manpower, then solicit for more funds from the government. It is not proper to force law firms who have spent considerable time and effort honing their forms and responses to create a completely new approach to the business, simply because the USPTO in inefficient. Surely the growing number of applications would be enough evidence to secure additional funding from Congress. We also maintain that the idea of a "paperless office"
is not an obtainable goal for an agency such as the USPTO at this time.
While theoretically this approach may be appealing, the legal basis behind
the registration process will never allow for a true "paperless office".
It is true that the USPTO could reduce some of the paper and documents
prepared in relation to applications for registration, but the burden
of reduction should be on the USPTO to become more efficient. How many
times has this firm submitted documents to the USPTO only to have them
lost or misplaced? Registrations go abandoned even after we have submitted
the proper documentation timely. The past actions of the USPTO hardly
indicate a competent agency who is ready to turn the corner into the digital
frontier. We suggest the USPTO perform an exacting housekeeping and accounting
first before shifting the burden to others. If the USPTO cannot perform
its current duties proficiently, how does it expect to perform them while
changing to a new platform and taking on additional duties?
Harrison & Egbert __________________________________________________________________ I understand, and empathize
with, the USPTO's desire/need to cope with the dramatic increase in the number
of trademark documents submitted. Our own applications have increased comparably
in the same period, and will continue to do so in the foreseeable future.
____________________________________________________ I am writing to express my opposition to the proposed mandatory electronic filing requirement. I find this proposal to be offensive from the standpoint of imposing what may be a substantial burden upon legal professionals. While some internal PTO efficiencies might be effected by this proposed electronic filing, they do not, in my judgement, outweigh the burdens that will be imposed upon the PTO's users. I find this proposal particularly objectionable because it appears to be solely for the convenience of the Office. Keeping in mind that the PTO is completely supported by user fees, the convenience of users should be of paramount importance in the overall operations of the Office. I have been practicing for over thirty (30) years, and have long been aware of the availability of the electronic filing procedures. I assume that many practitioners have adopted this system because they found it more convenient. The fact that other practitioners and applicants have not been utilizing the system suggests to me that the Office is attempting to coerce a result for its own convenience and has given small accounting to the interests of its customer base. If the Office requires additional staff to efficiently
process the incoming paper work, it should pursue the obvious alternative
of hiring additional, and perhaps more competent, clerical staff. If the
political issues that have led to past hiring freezes must be overcome,
then I would suggest that the Office request the assistance of its users
to apply the appropriate outside pressure to Congress or whatever other
agency of the government is preventing the Office from hiring the people
it needs to get the job done. Thomas E. Spath _____________________________________________________ The following are comments regarding the above [mandatory electronic filing rule]: 1. The increase in workload because of receipt of documents should be dealt with by hiring and training of adequate staff. 2. Mandatory use of computers is, in this writer's view, unconstitutional as it: (a) prohibits equal protection of the laws to all citizens, and (b) requires some citizens to be categorized as "lacking technical capability," and (c) denies access to the trademark system to those who do not have the financial means to purchase computers, e-mail, scanners, etc., even if technically advanced, and (d) places foreign nationals in a superior position to some U.S. nationals seeking trademark protection. 3.Further, having to reveal financial standing or technical expertise, is unfair to small business and favors large business owners and large firms over small firms and retirees wishing to continue in small practice. It also may encourage large business owners to unfairly use their economic power in related opposition proceedings. 4. Your system forces use of deposit accounts or credit cards. I prefer checks. People should have the option. Should it be necessary to have a credit card to have the constitutional right to protection. What if someone wants to file a single trademark? Will you open a new deposit account or make them wait to file an ITU application? 5. Because of the constitutional defects, your proposal places all trademarks filed under the mandatory system in jeopardy of being declared invalid as unconstitutionally granted. 6. As a senior citizen, not technically proficient, but one who personally files about 1,000 new applications each year (by express mail), you are forcing the undersigned to hire staff, invest in equipment, and in effect, increase costs at this end. The burden should be on the Trademark Office, not on the general public and not on small law firms. 7. I find the computer system printouts to be second rate in that they are not clear, and "third world like". 8.Further, since documents are required after filing, as indeed they must to facilitate examination in oppositions and litigation. there will be little savings in paper handling. 9.The errors in the Trademark Office processing are not caused by initial filing volumes, but by poor management. Please review the excessive and unnecessary errors in processing responses to official letters, delays on issuing official letters, certificates held at the printer for years, changes in sizes of certificates, et al. 10. The risk to make certain procedures mandatory is not a cover for poor management and disregard of the rights of trademark owners. In summary, I submit it is outrageous to require mandatory filing. It is not only an arbitrary and capricious administration system, but exhibits arrogance and disregard of rights of others. Simply put, it is not a fair system. Lawrence E. Abelman _____________________________________________________ The International Trademark Association (INTA) takes this opportunity to offer its response to the August 30, 2001 notice of proposed role making concerning the mandatory electronic filing of trademark applications for registrations and other documents at the U.S. Patent and Trademark Office (PTO). INTA strongly supports voluntary e-filing in light of the many benefits provided by the automated system. At the present time, however, we do not see the need for mandatory e-filing in light of the increasing voluntary usage of the automated system and the slow down in trademark applications at the PTO. These trends appear to have permitted the agency to be able to bring key indicators of productivity within desirable ranges. INTA Supports Continued Voluntary Use Already, without being mandatory, voluntary use of the e-filing system has risen steadily. According to the PTO's Performance and Accountability Report: Fiscal Year 2000, "electronic application filings more than doubled to 44,100 from 20,600 in fiscal year 1999" (p. 31). As we begin the transition from fiscal year 2001 to fiscal year 2002, we understand that roughly 30% of the applications received by the agency are in an electronic format. INTA supports the trend of increased e-filing usage and believes that the PTO should continue to encourage, but not require, members of the trademark bar to use the automated system. Continued voluntary use of e-filing is further indicated by the fact that there are many practitioners who are still becoming accustomed to using the automated system. Others are concerned about the effectiveness of the technology. For example, whether difficulties exist on the front-end or the backend, we have received comments that drawings in special forms and specimens are difficult to transmit and receive electronically without distortion or mishap. This leads to understandable reluctance among practitioners to utilize e-filing for use-based applications and marks in design format. Additionally, we continue to hear of concerns from practitioners, many of whom lack sufficient knowledge to sign on behalf of their clients or who believe it is in their client's best interest to sign the application, about the logistical difficulties in obtaining a client's signature when using the automated system. Among other concerns are the inability to: (1) modify or insert in the TEAS application any comments or explanations that might be needed; (2) electronically utilize the Supplemental Register; and (3) make an initial claim of §2(f) based upon evidence other than prior registrations. Finally, a number of practitioners have noted that the TEAS form cannot be changed easily once it is prepared, which oftentimes may be necessary after a client has reviewed a draft form. The end result is that the original application must be scrapped and the process begun again. Since the inception of e- filing, the PTO has consistently refined the process to account for customer concerns such as these and communicated the changes to practitioners through demonstrations in major cities like Washington, D.C. and Chicago. As the trend demonstrates, the practitioners have responded by making greater use of the system. We compliment the PTO for its efforts and suggest that the agency should continue to rely on this successful formula of improvement and educational initiative. Slow Down Provides Latitude With the recent slow down in trademark applications at the PTO, we believe this is an opportune time for the agency to continue to promote voluntary use of the e-filing system. Revised projections for FY 2002, which were distributed by the PTO after the president released his proposed budget, show that the agency expects to receive 360,000 trademark applications during the fiscal year, not the 540,000 initially anticipated by the president. Additionally, we understand that the slow down in business has even permitted the PTO to begin making headway with the backlog of pending trademark applications. Also, as of the end of July, first action pendency has been reduced to an average of 3.9 months. We have had reports that in some recent cases first action pendency is as low as two months. These indicators demonstrate that the PTO has the latitude to continue to encourage voluntary use of the e-filing system, and we support such an approach. Issues Concerning Exceptions to the Proposed Rule INTA is also taking this opportunity to identify ambiguities with regard to proposed §2.22(a), the exception to the rule pertaining to the lack of access to TEAS or the technical inability to use TEAS. We note that the proposed language does not specify whether the exception encompasses circumstances of temporary inaccessibility and/or whether an applicant or attorney is expected to make reasonable efforts to obtain access. Moreover, the proposed rule does not address: (1) whether or how the declaration or affidavit under §2.22(a) will be examined; (2) whether the veracity of a declaration under §2.22(a) might be used by others to call into question a filing date afforded a paper application; (3) what will be the effect of filing a false affidavit or declaration; and (4) what will be the process for challenging such a filing and the underlying application. Finally, concern has been raised regarding the process for challenging a false filing, either by petition or opposition, and the effect on the registration process of a new means of challenging applications. Should future conditions, such as a significant increase in the rate of trademark filings occur, thereby necessitating further consideration of a mandatory e-filing rule, we recommend that the PTO address these ambiguities in the notice of proposed rule making. In addition to providing clarification on matters concerning §2.22(a), we request that any future notice concerning mandatory e-filing also explain in detail why the PTO's proposed disparate treatment of U.S. and non-U.S. filers as noted in §2.22(b) is permissible in light of Article 3(2)(i) of the Trademark Law Treaty (TLT), which states that "no Contracting Party shall refuse the application, where the application is presented in writing on paper." Furthermore, INTA respectfully suggests that, to the extent there is concern that mandatory e-filing violates provisions of TLT that apply to foreign filers, it may be more appropriate to seek to amend the requirements of TLT to permit member countries to require e-filing rather than carving out an exception that creates disparate treatment. Conclusion In summary, at the present time INTA does not see the need for mandatory e-filing, but strongly supports continued voluntary use of the automated system. In order to promote greater voluntary use, we suggest on-going educational outreach by the PTO as to the use of the system and its many benefits and, where appropriate, upgrades to the technology. We also suggest the offering of financial incentives in the form of fee adjustments for those applicants and trademark owners who submit documents electronically. INTA stands ready to assist the PTO in the development and implementation of these initiatives. Thank you for the opportunity to submit comments on the proposed mandatory e-filing rule. Should the PTO have any questions or comments concerning the INTA response, please contact INTA Washington Representative Jon Kent at (202) 223-6222. Sincerely, _____________________________________________________ Comments regarding proposed changes pertaining to mandatory electronic filing through TEAS. 1. Concerns regarding the www.uspto.gov web site being down. If electronic filing is mandatory, and the U.S. Patent and Trademark Office web site is not operational, this will prevent us from filing trademark applications for our clients, and will prevent us from meeting deadlines regarding Statements of Use, Requests for an Extension of Time to File a Statement of Use, Sec. 8 Declarations, Sec. 8 & 9 Renewals. 2. Concerns regarding the internet in general being down. If electronic filing is mandatory, and the internet is down (which is possible, in view of recent events), this will prevent us from filing trademark applications for our clients, and will prevent us from meeting deadlines regarding Statements of Use, Requests for an Extension of Time to File a Statement of Use, Sec. 8 Declarations, Sec. 8 & 9 Renewals. A mail option should still be available. 3. Concerns regarding access problems to the internet at the law firm's site. Computer problems in companies are a fact of life, and making electronic filing mandatory is a burden to a law firm which may on occasion experience computer problems. 4. Concerns regarding proof of filing documents. Upon filing a document, a confirmatory email is supposed to be sent to filer. However, in the case that a confirmatory email is not sent, there is no way of knowing whether a document was received by the USPTO, and there is no way to prove that a document was filed by a deadline. (No equivalent of a stamped postcard.) 5. Problems with electronic filing.
6. If electronic filing is made mandatory, the U.S. Patent and Trademark Office should, in its new rules, represent that their forms contain all statutory elements necessary. 7. As proposed rules are written, foreign applicants are not subject to the mandatory electronic filing requirements. This provides foreign applicants with an advantage not available to U.S. applicants. This proposal is similar to the old rules when U.S. applicants had to have use of a mark prior to filing, and the "intent to use" basis was only available to foreign applicants. 8. Problems with registering stylized drawings and logos 9. Problems with submitting specimens 10. Many concerns listed above result in higher costs to law firms, which are then passed on to clients (such as conversion of a hand drawn drawing to an electronic drawing). There are many Applicants who are capable of filing their own applications, but choose to hire a law firm. Law firms have docketing systems that Applicants may not have, many Applicants do not have resources to file their own trademark applications, etc. Thus, these changes would be unfair to Applicants who use law firms for filing trademark applications. 11. Consider not making electronic filing mandatory, but charging a higher fee for paper filing/mailing of documents. Thank you for your consideration. Please address any responses to Miriam Trudell at mtrudell@sheridanross.com. Dana Cardwell, Esq. Sheridan Ross P.C. _____________________________________________________ This is to comment on the proposed rule change to make electronic filing of trademark applications mandatory. I agree completely and whole-heartedly with the comments of the International Trademark Association (INTA). I believe that it is a proper goal to move to an electronic system but I believe it is too soon to make such filings mandatory until the numerous issues raised in the INTA comments are resolved. Sincerely, Scott Keller _____________________________________________________ The electronic submission system seems to work fine for typed marks. However, for design and stylized marks, the requirement of attaching a black-and-white GIF or JPG image file makes the electronic system unwieldy at best. First, you have to have access to a scanner, which not everyone has. Second, you have to make the scanner work correctly (even the computer geeks I know have trouble getting their scanners to work reliably). Third, you have to manipulate the image somehow to get it in black and white format. And finally, you have to be able to attach the image file to your application and have confidence that it got delivered properly. All of this makes it very difficult to use the electronic submission system for design and stylized marks. And this difficulty will be felt most by small firms and individuals. Big firms probably already have the necessary scanning equipment and, more importantly, the computer gurus on staff to walk them through the scanning process. Making electronic filing mandatory would unfairly hinder small firms and individuals who do not have these resources available. Sure, there is the exception from the requirement if you submit an affidavit that you don't have access to the resources needed to file electronically, but that brings on at least 2 more problems that are particularly burdensome for small firms: 1) preparing an affidavit for every design/stylized mark application will make filing more time consuming (and therefore expensive) as one will have to prepare two documents instead of just the one; and 2) clients who review their files will see an affidavit from their law firm basically admitting that they lack the technological competence to file an application under the "normal" routine. The requirement of electronic filing will set up two systems, a normal filing system for the technological "haves" at the big firms, and an abnormal filing system for the "have-nots" at smaller firms. I would prefer to see a system that retains the availability of filing a paper application by snail mail, at least for design/stylized marks, without the need for filing an affidavit of incompetence. Brad Groff _____________________________________________________ I am aware of the proposed rulemaking which appeared in the September 25, 2001 of the U.S.P.T.O. Official Gazette. As I understand the proposed rule, the P.T.O. will mandate that all trademark applications, documents relating to Statements of Use, affidavits of Continued Use and Affidavits of Incontestability, be submitted electronically. Exceptions will be permitted but only with respect to specified documents. Through my own experience as a practitioner, I appreciate the Trademark Office's reasoning behind such a rule, in that the handling of U.S. mail by the Office is to say the least atrocious. It is apparent that the Office is well aware of this situation inasmuch as it presently requires practitioners or applicants to review their own files to ascertain whether the application has lain dormant for six months. This policy by applicants and their attorneys of the Office is already onerous and uncalled for. I personally have experienced numerous situations where mail received in the Office has not been received by the Examiner concerned. I have also experienced numerous situations where actions by Examiners have not reached my office resulting in severe problems at the least and in loss of rights in some cases. In only one case recently has a new trademark application itself become "lost" in the Office. Such a situation is manifestly intolerable and certainly would not be permitted to exist in the private sector. In view of the above, I can understand the Trademark Office's management's reasoning that electronic filing will cure the problem that the Office is experiencing in connection with the receipt from and dispensing to customers of mail. However, to again mandate to the Office's customers a procedure designed to overcome the Office's shortcomings is uncalled for and unfair. If the P.T.O. desires to accommodate its customers, it must do so democratically and therefore accept filings in the manner which customers desire, whether it be via U.S. mail or electronical1y. Respectfully _____________________________________________________ I wish to register my objection to the concept of mandatory electronic filing of documents for which forms are currently available via the Trademark Electronic Application System. Although many firms and individuals might be able to comply with such a rule, many more would not. Such a requirement would seriously jeopardize the ability of many persons and entities to make mandatory filings. Even so, any electronic filing system is completely dependent upon internet access being both available and fully functional. Yesterday, two separate construction crews happened to cut through cable and phone lines in Santa Monica and in Malibu. Santa Monica had no phones or cable in many areas, and the Malibu cut took down the entire land line phone system for thirty miles north to Oxnard. The phone and cable internet connections for each and every person and office within those areas was down until today. Had such a rule been in place, last minute filings yesterday (of which I made 2) would not have been possible. Our internet infrastructure is simply still too fragile to make internet filings mandatory. On the other hand, it is comforting to know that if I must get something to the Trademark Office on the last day, all I need is a first class stamp, a certificate of mailing, and a US Mailbox. There will always be situations where electronic access is simply not realistic or available. It is also not an appropriate role of the Commissioner's Office to try and "force" the public into the digital age. It is wholly improper to prejudice the registered rights of a person or entity, or place an artificial roadblock to registration, by requiring that mandatory filings be made through an electronic filing system. Very truly yours, _____________________________________________________ I was dismayed to learn that the United States Patent and Trademark Office proposes to require the electronic filing of all trademark documents for which forms are currently available in TEAS. While the USPTO has the authority to mandate the specific format fur filing these types of trademark documents, it is respectfully submitted that the USPTO should not restrict the manner in which such documents are to be submitted to the USPTO. In this regard, the Government Paperwork Elimination Act (GPEA) requires all Federal agencies, by October 21, 2003, to provide individuals or entities that deal with those agencies the option to submit information or transact with the agency electronically, and to maintain records electronically, when practicable. In particular, the GPEA requires Federal agencies to provide "for the option of the electronic maintenance, submission, or disclosure of information, when practicable as a substitute for paper. . . ." As this statutory quote makes quite clear, it was the intent of the GPEA to provide an "option" and not a mandate. However, the USPTO's proposed rules go far beyond the "option" intent of the GPEA in "mandating" its customers to only use electronic fi1ing. It is my opinion that, in accordance with the intent of the GPEA. USPTO customers should be a11owed to select the method of preparing and delivery documents that is most practicable for them. It is my experience that my clients strongly prefer the current practice of filing paper documents. These paper filings are not subject to the routine problems of computer failures, e-mail difficulties, et cetera which are routinely experienced by all those who use electronic communication. Thus, mandating only the use of electronic filings wil1 inherently create new "technical" problems that are much more difficult to remedy. One manner in which it is alleged that electronic filings will benefit the customer is that filing receipts for TEAS applications are sent via e-mail the same day of filing. It is assumed that the filing receipts would be sent to the e-mail address of the party who filed the application. However, in most law practices, filing receipts (as well as all other communications from the USPTO) must be processed through a central docketing department in order to ensure that the document is matched with the correct file and to route the paper to the appropriate attorney. The process proposed by the Office creates difficulties for most law firms. For example, if the filing receipt is received at an e-mail address that is no longer in use or is "down," then additional steps must be put into place to ensure that the filing receipt information is forwarded to the docketing department. I suspect that the most practical way to resolve this will be to use multiple e-mail addresses which will increase the work for both the USPTO and the law firm. In contrast, under the current procedures, where an application is filed via mail or courier, a self-address stamped post card is provided to the Office. The Office stamps the serial number on the post card and mails it back to the customer. Therefore, confirmation of filing and a filing receipt are available to the customer within a few days. I respectfully submit that there is no benefit achieved by filing a new application via electronic communication. Turning to other points raised as a justification for the elimination of paper filings, I ask the USPTO to publish the "survey" wherein USPTO customers who file electronica1ly allegedly are far more satisfied then customers who file paper applications. Based upon my law firm's experience with patent electronic filings, this has not been the case. More specifically, in discussing this matter with numerous patent attorneys in my firm, it is their uniform opinion that, at the present time, the drawbacks of electronic filing far outweigh any possible benefits. In short, they hate electronic filing of patent documents. For example, with patent applications, the length of time required to prepare applications is considerably longer when using PSAT documents as these documents cannot be easily edited once created. Furthermore, any sophisticated editing as may normally be done with regular Word 98 documents will result in errors in the final PSAT document. Obviously, this process significantly increases costs to the patent applicant and increases the work done at our firm. Even more important, the USPTO web site for filing patent documents is frequently either too busy, cannot be accessed or is down for some reason. Obviously, this can result in documents not being timely filed and the loss of patent rights. If trademark instructions from our client are not received until late in the day, there is no problem so long as the paper document may be either hand carried or mailed to the USPTO. However, if, as proposed, it must be, electronically filed and the USPTO web site cannot be accessed, or some other computer malfunction occurs, then the document cannot be timely filed. In summary, I strong oppose the mandatory requirement of electronic filing of all (or virtually all) trademark documents. First, the mandatory requirement is contrary to the "option" goal of the GPEA. Second, due to the routine failures of any computer systems, it simply is not realistic to mandate the use of only electronic filing. Rather, I strongly support an alternative approach wherein the customers of the USPTO are provided the option of making their own choice as to whether to file via paper documents or electronically. This is the actual method mandated by Congress in the GPEA and it is the method that is most desired by my clients. Best regards. _____________________________________________________ I am vehemently opposed to the proposed amendment requiring electronic filing of trademark applications for the following reasons:
Instead of forcing electronic filings on everyone, why not increase the incentives, promote the new method, and let people choose? Over time, most firms are likely to make a gradual transition to the new system. Those who don't will forfeit certain advantages. However, that should be each applicant's choice. Feel free to contact me for further discussion. _____________________________________________________ I am opposed to the proposed amendment making electronic filing of trademark applications mandatory. If a company files a trademark application directly, or through one of its employees, it makes no difference whether or not the company signs the trademark application. However, if a client is represented by an outside lawyer, it is extremely important that the client know exactly what is included in a trademark application. One way of ensuring that the client knows what is being filed on its behalf is for the client to sign a trademark application. This not only eliminates any future misunderstanding as to what the client told the lawyer, it also eliminates a lot of future correspondence with the Patent and Trademark Office to correct any erroneous information in the original application because of any misunderstanding between the client and the lawyer. Hence, it is essential that a client sign trademark applications before they are filed. In view of this, I believe the current rule giving an applicant the option of filing electronically or filing a signed trademark application is extremely important and should be retained. I do not believe that the rules should be changed to make electronically filing of trademark applications mandatory. Respectfully submitted, _____________________________________________________ We strongly support the U.S. Patent and Trademark Office's efforts to improve the quality of service. However, we have the following concerns regarding the U.S. Patent and Trademark Office's proposal to make it mandatory to file trademark applications electronically as well as other papers associated with trademarks. As discussed below, our concerns pertain to the unreliability of the Internet and the computers and servers required for the Internet connection, as well as to the methods of payment that would be required to be used when filing trademark documents electronically. Over the course of the last year, this Firm has experienced at least two power outages where power was interrupted in the middle of the day and was not restored until well within the night. Additionally, we have experienced many Internet service interruptions some as a result of servers and lines in the Internet infrastructure and some relating to our own network equipment. We are obviously concerned about meeting due dates or losing a filing date as a result of these interruptions. Accordingly, we request clarification whether such temporary disruptions in Internet service would qualify as an exception under proposed §2.22 thereby allowing us to file such trademark documents using the U.S. postal service while accompanying such papers with the necessary affidavit. In the absence of the ability to file paper by regular mail during such disruptions, we do not support mandatory electronic filing. We are opposed to requiring that the trademark fees associated with the filing of applications and other documents be paid either by credit card or deposit account. We have found through our experience that the U.S. Patent and Trademark Office has not adequately managed the deposit account program. We repeatedly find errors where charges were incorrectly charged to our deposit account. Additionally, a large percentage of the charges on our monthly statements do not include our docket number thereby adding to the difficulty of matching charges to the files in our accounting system. Also, the delay in receiving deposit account statements makes it difficult. Another clear disadvantage to utilizing a deposit account for a large firm, is that a large sum of money must be maintained in the account to ensure that all charges are covered. As you know, these deposit accounts are not interest bearing and thus requires a large diversion of a firm's funds into a non-interest bearing account where the money cannot also be used for other purposes. Additionally, because such charges are typically authorized by the attorneys rather than an accounting department of a law firm, extensive use of a deposit account creates many headaches in ensuring that an accounting department is appropriately informed of the charges in advance so as to ensure sufficient funds in the deposit account. This Firm has only 20 attorneys and has difficulty in this regard and we can only imagine the headaches that would be caused for some of the much larger firms that practice before the U.S. Patent and Trademark Office. Charging by a credit card solves some of the problems associated with deposit account, only again payment is authorized by an attorney and not the accounting department and the credit card would not indicate anything other than a charge paid to the U.S. Patent and Trademark Office and thus would not identify the files with respect to which the charge was made. Thus, use of credit cards in this regard for a large firm is highly impractical. In general, our Firm utilizes checks wherever possible. In this way, the checks are issued from our accounting department and tracked at the time that they are printed. This allows only the amounts needed to be drawn from an interest bearing account and is much easier to manage from an accounting standpoint. We propose that the U.S. Patent and Trademark Office consider allowing payment of the fees as associated with electronic filings by check. We believe the TM electronic filing system could readily be modified to automatically generate an invoice. This could be accomplished by modifying the system to look for either a credit card number or deposit account designation, and if not present, attach a one page invoice to the filing receipt that is immediately sent back to the filer. The invoice could be due and payable, for example, within ten days of receipt so as to ensure that the Trademark office promptly receives the funds without further penalty. Unless such a system were adopted, we simply cannot endorse the U.S. Patent and Trademark Office's proposal for mandatory electronic trademark filings. Likewise, unless the U.S. Patent and Trademark Office allows for temporary Internet service interruptions to qualify under proposed §2.22, we could not support this proposed rule making. Your consideration of these concerns is greatly appreciated. Sincerely, _____________________________________________________ 1) The notice of Proposed Rulemaking states 'TEAS is available for the filing of trademark documents 24 hours a day, 7 days a week . . . ". That may be true in theory, but not in actual practice. 2 ) The electronic filing system may not be "available" if there is a power failure or technical malfunction or disruption of computer equipment at the office of the applicant/registrant, the office of the attorney, the internet service provider, the telephone service connecting the attorney to the internet service provider, the USPTO, or the internet backbones connecting the internet service provider to the USPTO. If any such disruption of a computer connection between the applicant/registrant or the attorney and the USPTO exists on the final critical day for filing any particular trademark document, then it would be impossible for the applicant/registrant to file the document on time if electronic filing is mandatory. 3 ) I suggest that there must be some emergency backup system for filing tr:ademark documents, for example by the traditional paperfiling routes, in the event of temporary technical failure or disruption that prevents the electronic filing of the document. The paper filing in such a case could, for example, be accompanied by an affidavit or declaration under §2.20 certifying that the document would have been filed electronically but for the existence of a technical problem that prevented such electronic filing. 4) Please clarify whether such a temporary situation is intended to be covered by the proposed §2.22 Declaration stating that the user "does not have access to TEAS or does not have the technical capability to use TEAS". Sincerely, _____________________________________________________ Bromberg & Sunstein LLP is an intellectual property law firm with a significant trademark prosecution practice. As such, we have given serious consideration to what mandatory electronic filing of trademark applications and related documents would mean for our firm, particularly the attorneys, paralegals and support staff in our trademark department, and for our trademark clients. We have concluded that while electronic filing of trademark applications and other documents may be appropriate in certain situations or for certain clients, we do not believe that electronic filing should be made mandatory. Accordingly, we agree with the position that the International Trademark Association (INTA) has taken on this issue, which is set forth in INTA's October 12, 2001, response to the United States Patent and Trademark Office's (USPTO) request for comments on the proposed rule regarding mandatory electronic submission of applications for registration and other documents. We believe that electronic filing should remain voluntary. At the same time, we believe that the USPTO should continue to encourage use of the electronic filing system by providing information and instruction through seminars and USPTO publications and by continuing to refine the electronic filing system in response to customer concerns and complaints. If, on the other hand, the USPTO determines that implementation of a rule mandating electronic filing of trademark applications is necessary, we strongly agree with INTA's position that the proposed rule must be clarified in certain respects prior to implementation. Thank you for your consideration. Bromberg & Sunstein LLP _____________________________________________________ We write in connection with the Office's proposed rule to require electronic filing of trademark documents. We oppose the idea that such documents must be filed electronically for a few reasons: 1. If we file electronically file on behalf of our clients applications and other documents called for in the proposed rule changes, we are exposing ourselves to being material witnesses in the event the application is challenged by third party and could, therefore, find ourselves being disqualified from further representations of our clients as a result. We think this would work an unfair result on counsel for all applicants. The present system that permits the filing of applications in paper form, which are signed by applicants themselves, avoids this problem. 2. Computer viruses of late have disabled many host servers for E-mail and recipient users' computers. The "code red" virus is one that quickly comes to mind. Such viruses now occur more frequently than before and the trend does not seem to be diminishing. If, for example, a convention priority filing deadline has to be met and we cannot transmit the necessary documents because of a computer virus problem, our clients could miss deadlines. The current provisions for filings by Express Mail avoid this problem. If the Office believes that it is essential that electronic filing be mandatory, then we respectfully suggest that the Office consider permitting attorneys to electronically scan trademark applications and other documents that have been signed by applicants themselves and that such scanned documents be submitted electronically to the Office (including digitized photographs of specimens of use). This will avoid the problem of attorneys being disqualified as witnesses and will, as the same time, reduce the amount of paper in the Office. This suggestion will not, however, avoid the problem of computer viruses disabling internet servers and computers. Thank you for your consideration. Very truly yours, _____________________________________________________ Our firm joins with the three professional organizations of which we are members in opposition to the mandatory nature of the electronic submission of documents as proposed in the notice of proposed rule making published on August 30,2001. We participate in and support the elective use of the electronic filing procedures. For the reasons stated at the Hearing on this subject held on October 12, 2001 by representatives of the American Intellectual Property Law Association, the International Trademark Association and the American Bar Association there should be no mandatory filing of documents in electronic format. Rather, the electronic filing system should be improved and made more user friendly so as to encourage its use. There may also be other incentives to encourage use, such as passing on cost savings [if any] to users of the electronic filing system. Encouraging rather than mandating electronic filing is more consistent with a business-like interaction between the PTO and its customers. Respectfully submitted, _____________________________________________________ This is a response to the Notice of Proposed Rulemaking published in the Federal Register of August 30, 2001 regarding Electronic Submission of Applications for Registration and other Documents. It is filed on behalf of Paul F. Kilmer, Carol L. B. Matthews and Thomas Brooke of Holland & Knight LLP. We stand opposed to the proposal made by the Patent and Trademark Office that would largely convert the trademark filing system to electronic submissions. The electronic filing of documents with the Patent and Trademark Office will largely be done by the private bar and corporations. Not all law firms and corporation are in a position to meet the minimum requirements of the proposed system. Forcing these organization to acquire and implement technology in order to benefit from the trademark registration system is an unfair burden at this time. We are also concerned that the proposed electronic filing system is in violation of the "verification" required under Sec 1 of the Lanham Act. Until that issue has been resolved by an Article 3 court, we believe it is not only premature but also potentially unlawful to require electronic filing in possible violation of the Section 1 verification requirement. Further, for applications filed by attorneys, electronic filing places a lawyer in the peculiar and possibly illegal position of appointing himself as attorney and domestic representative for the applicant. The following issues have also not been addressed: · Credit card security Consideration has not been given to the burden and expense this proposal visits on the public and the private bar. Even firms which are relatively sophisticated technologically will be forced to purchase a number of scanners and digital cameras for specimens. The financial burden on smaller firms will be greater. With a mandate of making PTO information available to the public, the move to a total electronic environment in fact restricts access to information. We propose that electronic filing be encouraged, but not made mandatory without further thought to core issues such as overall reliability of the computer systems, the ability to maintain extremely large number of documents, and the ability to retain electronic files indefinitely. Sincerely, _____________________________________________________ AutoDocs, LLC is the developer of IPDASä, the Intellectual Property Document Assembly System. IPDASä is software that facilitates the creation of USPTO and PCT paper filings and other documents created by our law firm and corporate clients during the course of prosecuting patent and trademark applications. With certain exceptions, the USPTO is now proposing to make mandatory electronic filing of certain trademark documents using TEAS, the Trademark Electronic Application System. We take no position on either the merits or timing of mandatory electronic filing. We limit our comments, instead, to our opposition to the USPTO's specification of TEAS as the exclusive filing mechanism, particularly for large institutional filers (both law firms and other entities) that make the lion's share of all trademark applications ("Class 1"). We distinguish Class 1 users from less technologically advanced and occasional users ("Class 2"). TEAS performs three broad functions: 1. data collection (graphical wizard for data entry), TEAS is well conceived, getting better with time and useful for Class 2 filers. On the other hand, TEAS is a major, counterproductive step backward for most Class 1 filers. In particular, many law firms and other entities have invested heavily in systems (including networks, databases, computer hardware and software) designed to automate the prosecution practice. In all such systems, the filing of a trademark application is but one part of an integrated process that has as a principal design objective the elimination of redundant data entry. For example, when a law firm files a trademark application, it typically sends a reporting letter to its client. Using systems like IPDASä, the data are retrieved from a database and outputted directly into appropriate templates in the required format, all in a matter of seconds. Equally important, data that are used over and over again (such as the name and address of a company officer of a large client) are typed only once in well-designed systems such as IPDASä and are available to users throughout the enterprise when and as needed. Data integration extends to many other enterprise databases including docketing, accounting and document management systems. TEAS cannot be integrated with these systems, and its use imposes a significant cost penalty on Class 1 users by requiring redundant data entry. Indeed, in the interest of reducing its own cost of doing business by eliminating labor-intensive paper shuffling, a TEAS-mandated electronic filing system will have precisely the opposite effect on Class 1 users. GPEA is a two-sided coin; tailoring the USPTO's business practices to technological advances likely will make the USPTO more efficient; doing so in a manner that does not adequately consider the business practices of its Class 1 users likely will make many of them less efficient. GPEA does not mandate electronic filing and it certainly does not mandate TEAS, which in the end is but one of many possible approaches to implementation. By mandating use of TEAS, the USPTO has chosen to enter the end-user software business and, in doing so, it mistakenly assumes that that which best suits its internal requirements suits the requirements of all users, large and small. That, as we have shown above, and as some other commenters have already argued, simply is not so. The solution is for the USPTO to draw a distinction between that which is necessary for the success of electronic filing - the receipt of fielded data that conform to precise requirements - and the business practices used to prepare the filing. In other words, it should not matter how filers assemble their applications as long as the end result is filings that comply with the USPTO's specifications. Indeed, we respectfully suggest that software companies and the Class 1 filers themselves are far more attuned to the business practices that drive the preparation of applications than is the USPTO. Making this happen requires the segmentation of present-day TEAS functionality into two modules: a wizard used for entering, validating and formatting data and an electronic portal used to receive and transport the data to the USPTO's back-end systems. As we understand TEAS, this is essentially what happens today. In TEAS as we envision it, use of the wizard functionality would be optional and the electronic portal would be available for all filers, whether or not they use the wizard. For those who are content with TEAS as a complete solution, it would be business as usual because the changes under the hood would be transparent. Those who are not would turn to other products to handle the data entry, validation and formatting functionality, products that could leverage the other systems which Class 1 filers already have in place. Once the data are in the form specified by the USPTO (both as to field definition and data format, e.g., XML), the data would be transmitted to the electronic portal for "electronic filing" in the USPTO's back-end systems. There are many reasons why many in the industry, particularly the Class 1 filers, have been slow to embrace electronic filing or have rejected it altogether. It is noteworthy that the comments of the three major bar associations in this rulemaking range from lukewarm endorsement to flat opposition. The only way to change this attitude is to "win the hearts and minds of the people." There are things that need fixing before that can happen. The proposed imposition of present-day TEAS on Class 1 users is one of them. Respectfully submitted, _____________________________________________________ I urge the USPTO not to adopt mandatory e-filling, as recently proposed. Not withstanding the proposed exemption for persons who provide an affidavit of non-access to TEAS, the proposed requirement will wrongly prejudice the trademark rights of all who must or elect to use paper filings. The proposed requirement accordingly will unfairly injure small entrepreneurs and small law firms. The proposed requirement also threatens to jeopardize the rights of trademark owners, and their attorneys, who encounter electrical power failures, computer failures, and failures in electronic communications. Failures of these kinds do occur and can occur rather frequently. A further problem with the proposed requirement is more philosophical. The requirement limits and restricts the access of the citizenry to the government that is supposed to serve its citizens. Mandatory e-mail filings may appear to be a small matter, in this regard. But erosion proceeds just that way, one small matter after another. I propose, instead of mandatory e-filing to solve the paper problem at the USPTO, the adoption of a two-tier fee structure, with one set of fees for e-filings and another for paper filings. The lesser fees for e-filings can reflect at least a portion of the savings to the USPTO from electronic filings. Over time, this procedure is likely to motivate an ever increasing number of both domestic and non-US filers to file electronically. Hence, my proposal provides a more fair and friendly path to the e-filing goal of the USPTO. I thank you for this opportunity to comment, and for considering my comments. Incidentally, I have represented trademark owners at the US Trademark Office throughout my forty-plus years of practicing law. Yours very truly, _____________________________________________________ The American Intellectual Property Law Association (AIPLA) appreciates the opportunity to present its views on the Notice of Request for Comments on Electronic Filing of Trademark Documents Mandatory. These comments augment our oral comments delivered at the public hearing held by the USPTO on October 12, 2001. The AIPLA is a national bar association of more than 13,000 members engaged in private and corporate practice, in government service, and in the academic community. The AIPLA represents a wide and diverse spectrum of individuals, companies, and institutions involved directly or indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property. AIPLA applauds the PTO's efforts to streamline its operations, including the advancements it has made in implementing electronic filing of trademark applications and other papers. AIPLA would be willing to support mandatory electronic filing of such papers if the issues identified below are resolved. The overriding concern of AIPLA members is to ensure that mandatory electronic filing does not jeopardize a client's trademark rights (e.g., by causing a delay in an application filing date or a missed deadline). Other administrative and procedural difficulties that members have encountered and questions regarding implementation of mandatory electronic filing are also addressed below. 1. Need for a "Catch-all" Exception Allowing Paper Filing When Necessary Situations may arise where it is simply not possible or practical to file an application or other document electronically on a given day. These may result from computer viruses, local systems failures, difficulties with the PTO website, days of extremely heavy Internet usage, unique issues to which the applicable electronic form is not adaptable, or many other possible problems. While the proposed rule provides limited exceptions for persons unable to file electronically, a broader exception is needed to cover situations where electronic filing is not feasible under the circumstances. AIPLA recommends adding an exception whereby a paper copy of any application or other paper could be filed, provided that it include a statement that good cause exists for not filing the paper electronically. 2. Payment and Accounting Issues The PTO's current electronic filing system allows payment only by credit card or deposit account. AIPLA members using these payment methods have reported difficulties reconciling charges made by the PTO to track debits (and credits) to a specific application. A better reporting system is necessary to allow firms to allocate the funds for billing back to their clients. If the PTO could revise its credit card billing system such that a particular charge could be identified (e.g., the application number and/or attorney docket number appearing in the line item on the card's monthly statement), this problem would be resolved. Accurate reporting of all debits and credits to the deposit account, with attorney docket numbers, is also needed. Additionally, AIPLA members are concerned that payment difficulties with electronic submissions could result in the loss of a filing date or failure to meet a deadline. This concern is heightened for those firms and companies that typically pay such fees by check, using deposit accounts as a back-up. Because the electronic filing of all applications and related papers will result in a significant increase in the volume of transactions involving the firm or company's credit card(s) and/or deposit accounts, there is an added risk that an attempted payment may not be completed. This may be due to overdrawing a deposit account, credit card processing problems (credit limit, lost or stolen cards requiring cancellation of the card, etc.), or other as-yet unforeseen difficulties. Thus, AIPLA proposes inclusion of a "cure" provision for payments that were attempted in good faith but failed to be processed. Such attempted payments could be cured by a later payment, and deemed made on the date attempted, in order to maintain the original filing date or meet the applicable deadline. 3. Signature Issues AIPLA members have encountered difficulties in utilizing the electronic signature procedures, particularly where the application must be signed by someone in a remote location who does not have the computer facilities and/or technical knowledge necessary to complete the electronic signature process. The recently (June 2001) added "text form" provisions for trademark applications (particularly the procedure allowing "pen-and-ink" signature) reduce the burden on the signatory, but do not reduce the technical complexity of the preparer's task. Based on the limited experiences reported by AIPLA members using these new procedures, they have not eliminated the technical difficulties in the signature process.1 Additionally, the "text form" provisions do not at present appear to be available at all for other electronically-filed forms. At a minimum, the "text form" provisions should be implemented in a more technically-friendly manner (such as by a separately-filed e-mail attachment) and should be incorporated into all forms required to be filed electronically. 1 For example, using the "text form" procedure requires the preparer to leave an unfiled application on the PTO website while the signature is obtained from the client. While there is a "download portable form" option whereby the application may be saved as an HTML file on the user's hard drive, AIPLA members doing so have reported receiving Windows warning messages stating, "This Web page may not save correctly." Additionally, when using the portable form option, the user receives a message from the PTO stating that "due to technical limitations within the browsers now available," the previously-attached image files (the mark image for a stylized or design mark, and/or the specimen) will have to be re-attached before final submission. 4. Revision Needed to Comply with TLT The current electronic application form requires the applicant to specify at least one filing basis. For mandatory electronic filing to comply with the Trademark Law Treaty ("TLT"), the form must be revised to allow applicants to receive a filing date without specifying a basis. See TLT, Article 5; 37 C.F.R. § 2.21 (listing the elements that may be required to receive a filing date). 5. Provisions for Restoring Lost Electronic Submissions AIPLA members have generally been quite happy with the immediate-receipt feature of electronic filing of applications. However, as with any paperless system, there are concerns that lost filings or misdirected e-mails could result in loss of rights. AIPLA members request that these situations be treated in the same manner as lost paper correspondence, and that the PTO implement procedures whereby e-filings that are lost may be restored upon appropriate evidence that the applicant properly and timely acted. 6. Exception for Foreign Applicants a. Possible Ambiguities Under the proposed rules, "a person described in 15 USC 1125(b)" (i.e. certain foreign applicants) will be exempted from mandatory electronic filing. AIPLA members have expressed concern that this may create some ambiguity regarding whether the exception covers only foreign applicants relying on Section 44(d) and/or Section 44(e). AIPLA presumes that the exception applies to any applicant that satisfies the definition set forth in the first clause of Section 44(b), regardless of what filing basis that applicant claims.2 AIPLA also presumes that the exception will apply to applications filed by U.S. attorneys on behalf of qualifying foreign applicants. 2 Limiting the exception to foreign applicants relying on Section 44(d) and/or (e) would appear to violate TLT Article 5, since it would deny a filing date to a foreign applicant filing a non-electronic Section 1(a) or (b)-based application meeting all requirements of that Article. b. Limit Exception to Applications AIPLA assumes the exception for foreign applicants was included to honor U.S. obligations under TLT. AIPLA expresses no opinion as to whether the TLT or the TLT Implementation Act permits or requires the proposed exception, but because this exception gives preferential treatment to foreign applicants over domestic applicants, AIPLA believes it should be drawn as narrowly as permissible. Thus, AIPLA suggests that the exception be limited to original applications and renewal applications,3 and that it not apply to other documents available in TEAS such as amendments to allege use, statements of use, extension requests, Section 8 and 15 affidavits, etc. In addition, AIPLA suggests that the PTO reduce the filing fee for applications filed electronically in order to give all applicants, and especially foreign applicants who will receive preferential treatment, a greater incentive to file applications electronically, and to pass on the PTO's cost savings in receiving and processing electronic applications to TEAS users. 3 See, e.g., TLT Articles 3(2)(i), 5, and 13(2)(i). 7. Image Formats The requirement that all images and documents be submitted in either GIF or JPG format has also caused some inconvenience among AIPLA members, particularly when dealing with multi-page documents such as specimens or signed applications using the "text form" signature provision. Although AIPLA understands the PTO's need to limit the number of formats it receives, it recommends at least adding the widely-used PDF format for such documents. 8. Timing Although AIPLA supports the PTO's efforts to encourage applicants to file applications and other documents electronically, the rules requiring mandatory electronic filing should perhaps be temporarily deferred. The issues discussed above may take some time to adequately resolve. In addition, we understand that the PTO is in the process of implementing the XML standard, which will enhance user compatibility and further facilitate electronic filing. Finally, we understand that trademark filings have significantly decreased this year in comparison to last year, thus perhaps tempering the urgency to transition to an all-electronic system. Thank you again for the opportunity to comment on this initiative. We look forward to working with you and others in the Office to implement electronic filing as seamlessly and efficiently as possible. Sincerely yours, _____________________________________________________ This responds to the Office's request for comments as to proposed mandatory electronic filing of trademark application. Our concerns include the following: 1. The rules are unclear as to handling of applications for foreign clients. Assuming a U.S. attorney represents the foreign applicant, can the filing of their applications still be accomplished by mail under the exception of Sec. 2.20/2.22? We assume so, but clarification would be appreciated. 2. Electronic mail and internet servers are prone to sabotage, either through routine viruses of the types already in circulation, or through future enhanced sabotage efforts of terrorists. If electronic mail or internet access either of the recipient (PTO) or of the sender (applicant/counsel) has been compromised, then it will be impossible for the applicant to meet filing deadlines that may be critical, either for establishment of priority or for some other reason. Numerous intellectual property law firms in the Research Triangle area of North Carolina were entirely without internet access for several days during the past year alone due to viruses that either attacked their own servers, or that attacked the servers of their internet service providers. Requirements for electronic-only filing under these circumstances effectively result in a complete bar to filing. Applications and other documents filed by Express Mail are not dependent on technology, and filing deadlines could be met even if there was no power at all in a given firm's office. The provision that an applicant or attorney who does not have access to TEAS can so certify under Sections 2.20 and 2.22 is not adequate to handle these situations, since the Express Mail filing procedure will have been entirely eliminated by the proposed amendment to Section 1.10 and hence there will be no means of obtaining an immediate filing date. If this result is not intended, and it is intended that counsel can file by Express Mail under such circumstances and have the benefit of that filing date, then the language of the proposed rules needs to be amended to so state. 3. Although the Office's intent to provide reasonably quick receipts is admirable, the receipts have not in the past been as fast as those available with Express Mail, which can be instantaneous if necessary. There do not appear to be sufficient safeguards to protect a filing date when applications are transmitted by an applicant/counsel, but not received by the PTO; and there is no sufficiently prompt way for counsel to know whether the application has been received when deadlines are critical. Unless instantaneous receipts can be provided, then counsel should be permitted to obtain a filing date by certifying transmittal rather than having to rely on a receipt. 4. For counsel, filing through TEAS essentially requires greater reliance on the Deposit Account since funds must be provided at the time of filing and counsel are not typically authorized signatories on their clients' checking accounts or credit card accounts. This has two problems: First, at least for firms representing small businesses, municipalities, and individual clients, the clients often delay providing their applications and funds until the last minute. State Bar requirements, at least in North Carolina, do not permit counsel to assume a client's check will clear and do not permit counsel to pay money out of a trust account until a client's check has had sufficient time to clear. When filing by Express Mail, the client's check can simply be made payable directly to the Office. However, when filing electronically, this is not possible, since the rules currently posted on the TEAS site require that the person actually submitting the form be an authorized signatory on any checking account to be used. Thus, the Office is in essence requiring counsel to advance money for clients. Such a requirement places an unfair burden on counsel, particularly counsel in smaller firms and solo practitioners. Second, Deposit Account information is not kept current by the Office, nor is it provided to depositors in an easy-to-understand format. Reconciling Deposit Account statements against actual charges already is difficult, and mistakes are not uncommon. Ensuring that appropriate funds are on deposit at all times and that the Office has appropriately deducted the correct funds from a Deposit Account will be difficult. Correct and comprehensible Deposit Account information should be made available on a real-time basis, before any mandatory electronic filing procedure is implemented; a single-transaction receipt, as proposed, is insufficient. 5. The method for affixing an electronic signature is insecure. It will be difficult to ensure that the person whose "signature" is affixed, did in fact sign. The Office is magnifying opportunities for fraud. 6. Our experience is that the time the Office has listed as being required to complete either the electronic forms or printed applications substantially understates the "information-gathering" time required; ignores any time relating to consideration of potential alternate identifications of goods and services to afford increased scope of protection; and essentially ignores time required for transmittal of the application to the applicant for review and approval. The estimates appear to assume that the person filling out the form has personal knowledge of each of the facts requested, with no need to review records to determine (for example) dates of first use, and no need to look for or scan specimens. They also appear to assume that the application is in a single class and for very few types of fairly standard goods/services whose nomenclature is immediately obvious. Susan Freya Olive _____________________________________________________ For reasons discussed below, I strongly oppose the Trademark Office's proposed rulemaking to only permit electronic filing of trademark documents. I sympathize with the Office's struggle with the difficulties caused by recent increases in the volume of trademark application filings. Our small two-attorney law office has seen a dramatic increase in the number of errors caused by USPTO clerks in the processing of trademark applications. Whereas data entry errors at the USPTO were once only rare, occurring at a rate of about one percent or less of applications that we filed, we are now seeing error rates that approach 100% of all applications filed. In one recent application, USPTO clerks introduced new errors each time they responded to our requests to correct certain USPTO data entry errors in the application as filed, and, after at least four unsuccessful attempts by our office at getting the data corrected, the errors were finally corrected by the Examining Trademark Attorney himself. It is not uncommon for the correction of USPTO errors to require two or three correction attempts by the Trademark Office. However, such a high error rate and repeated errors can only be blamed on incompetence, lack of training, and improper procedures and controls at the Trademark Office, and cannot be dismissed as having been caused only by the volume of applications. Turning to the specific problems that would be caused if electronic filing were to be mandatory: (1) Our firm's experience with USPTO processing of Deposit Account charges indicates that the USPTO cannot reliably and accurately process such charges. For example, our small two-attorney law firm has, at present, $1,300.00 in still-unrefunded erroneous charges that were made to our Deposit Account over a year ago. A very typical example of such erroneous charges is when the USPTO misplaces specimens filed with a trademark application or Statement of Use. When the USPTO Examiner, in a written action, apologizes for the lost specimens that clearly were present in the application or filing when made but which subsequently became lost at the Trademark Office, and then requests replacement specimens, our deposit account is often and incorrectly charged a fee for submittal of an Amendment to Allege Use at the time the replacement specimens are filed, and, in at least one case, has received such an improper charge in a "use-based" application where specimens were even initially filed with the application. In the past, it has taken one to two years, with repeated status inquiries that go unanswered, to get such erroneous charges reversed, and our bookkeeper has been informed by USPTO accounting clerks that the USPTO is currently almost a year and a half behind in processing Deposit Account error corrections. The expense of these efforts to correct improper charges often dwarfs the amount of the incorrect charges. The USPTO now proposes to only allow payments via credit card and USPTO Deposit Accounts and, when insufficient funds are present in a Deposit Account for an application whose filing is mandated to be electronically submitted, a filing date will be denied to that application. At present, our small firm only needs to maintain a Deposit Account threshold of several thousand dollars so as to cover USPTO erroneous charges and to cover any rare inadvertent error in fee payment calculation by our office. Upon enactment of the new requirement that trademark filing fees may no longer be paid by check, our firm would then face the prospect of having to dramatically increase the interest-free loan that we provide the USPTO through our Deposit Account to cover erroneous Deposit Account charges by the USPTO, or to face the prospect of covering significant improper credit card charges to a provided credit card account. We would also be faced with the dilemma of either disputing the erroneous charges within a credit card issuer's 30-day period (by which time the reason for a USPTO improper charge might not be understood), in which case the USPTO might deny a filing date and our clients might be subjected to a lengthy and expensive appeals process, or else we would have to cover interest charges on erroneous charges until the matter is resolved, a process, at present, that seems to take between one and two years. This is unacceptable unless the USPTO adopts, concurrent with these present regulations, a willingness to also refund credit card interest charges on erroneous charges made by the USPTO, and further also adopts a provision for late payment of fees in the instance of insufficient funds in a Deposit Account. The USPTO is to be commended for adding an upcoming procedure for EFT payment of fees beginning after November 13, and these new EFT procedures may go a long way toward addressing the above-described problems. (2) Even if the proposed regulations were to be adopted, the provision for exceptions to mandatory electronic filing, as recited in proposed 37 CFR 2.22, are inadequate. Although the proposed rules only mandate that specific documents be filed electronically, the Office's preface to the proposed rule changes indicate that the Office will expand the requirement of electronic filing as other documents become available, so those cases are addressed here as well. Several cases come to mind. The first is a case caused by the fact that not all trademark submission documents are available electronically, but may become available (or unavailable) during the preparation/prosecution of a given trademark application. For example, at present, it is not possible to electronically file, inter alia, a Request to Divide or a Certification under 37 CFR 3.73(b). If an attorney, etc., then prepares, e.g., a hardcopy Request to Divide, sends that document to the client/applicant for review and approval, and then prepares to submit that document, the USPTO, even on the very day of submission, may make such a document available, thereby making any Declaration under proposed 37 CFR 2.22 inaccurate unless the attorney discards all of the hardcopy documents previously prepared and starts anew using the electronic TEAS software, thereby causing the client to incur additional legal fees. To handle this case, the proposed 37 CFR 2.22 should have a grace period during which non-electronic versions of documents could still be filed following a TEAS document becoming available (whether following a period of unavailability, or whether after becoming available for the first time). A second case is where a client may have a particular statutory deadline that becomes known at a late date, and a TEAS document is available at that time for submission of the particular filing to the Trademark Office. The attorney may use the TEAS system to prepare the required document, submit the prepared document to the client for review, and then, at the time of submission, the Trademark Office may have changed the particular document or may have removed it from access, or the TEAS system may become unexpectedly unavailable, thereby causing the attorney to have to discard all documents prepared for electronic filing and then to have to prepare new hardcopy documents for filing on an expedited basis. A third case is where the attorney believes that the provided TEAS document is inadequate for the particular facts of a case, and a document created "from whole cloth" is necessary. At a minimum, the proposed 37 CFR 2.22 should provide an exception whereby the attorney/applicant can declare that the documents and/or procedures provided by the TEAS system are not believed adequate for the facts of the particular submission. (3) The present system, whereby filings are made via 37 CFR 1.8 or 1.10, as necessary, and obtain a filing date by independent verification of submission to the U.S. Postal Service, is a distributed one with inherent redundancy that does not have a single point of failure. If a particular post office becomes closed, others nearby are usually available. If a requirement of mandatory electronic filing of trademark documents is made, many independent systems, all in series, must be operating correctly without error for the submissions to be made. For example, a particular attorney's internet service provider ("ISP") must be correctly operational, all of the internet backbone services and routers between the attorney and the USPTO must be operational, the firewalls and servers at the USPTO must be operational, and the TEAS software at the USPTO must be operational and interoperable with software on the attorney's computer(s). If any component along this complex path from an attorney or applicant to the USPTO TEAS system fails, the TEAS system then becomes unavailable, perhaps only momentarily or perhaps for an extended period of time, without warning. At a minimum, provision should be made for simply printing a TEAS filing and mailing it using the certification under 37 CFR 1.8 or 1.10, as appropriate, in the event any of these contingencies occur, which are broader than the circumstances contemplated in proposed 37 CFR 2.22. A companion provision, similar to present 37 CFR 1.6(e) (Interruptions in U.S. Postal Service), should also be provided for interruptions in TEAS service, whether caused at or by the USPTO, or caused by any component in the path from the attorney to the USPTO TEAS system. The need for such a provision should be obvious, particularly in view of the recent terrorist attacks on our country and on our government. (4) Using the TEAS system, filing receipts and acknowledgements are provided to the submitter via email rather than by return of a date-stamped postcard from the Mail Room of the USPTO. Although, at the time of submission of this comment, the USPTO email servers and DNS servers appear correctly configured, such has not been the case in the past, and such past misconfiguration of USPTO servers has prevented email communication between the USPTO and the undersigned attorney in the past on more than one occasion. If electronic filing is mandated and if the USPTO servers are misconfigured, then no receipt of filing will be provided by the USPTO and, because the provisions of 37 CFR 1.8 and 1.10 will no longer be applicable, no proof of filing will be available. If electronic filing is to be mandated, then provision should be made for such circumstances. As an example of such misconfiguration at the USPTO, many firms, including ours, because of concerns that incoming email may be forged, have our email servers configured in a "high security" mode whereby email is rejected unless a DNS lookup of the announced name of the incoming email server matches the IP address of the incoming connection, and also unless a "reverse IP" DNS lookup of the IP address of the incoming connection matches the announced name of the connecting email server. If these security checks are not satisfied, it appears to a secure email server that some email server is attempting to impersonate another email server, and the possibly-forged incoming email should not be accepted. Such misconfiguration, among others, has been present on the USPTO email servers in the past, and may inadvertently occur in the future. An acceptable solution would be for the USPTO to use the U.S. Postal Service to mail out, to the correspondence address, a confirmation of filing if email to the submitter "bounces" for whatever reason. (5) Electronic filing, if mandatory, will increase filing costs to applicants and their attorneys. With the present system of filing documents with the U.S. Postal Service, the outgoing package will remain in the mail room of the submitter until the deposit with the postal service has been accomplished. Occasionally, upon subsequent review, errors are discovered in a filing shortly after the package has been sealed, and it is a simple matter to retrieve the package from the submitter's mail room and correct the errors and repackage the submission. With the proposed mandatory electronic filing, and the Trademark Office's policy of charging the filing fee as a non-refundable "processing fee", such correction of errors is not possible. This single point is one of the main reasons that our firm has not submitted electronic filings to the USPTO. Other U.S. government agencies, such as the IRS, that mandate electronic payment of fees and submission of documents, etc., provide for cancellation of an erroneous submittal so that a replacement submittal can be made, and the USPTO should provide such a mechanism for cancellation of an erroneous submission without processing. A reasonable approach might be to provide a mechanism for submittal cancellation prior to midnight on the day of submittal, etc. An attorney or applicant could access the TEAS system using a submittal number provided on an electronic acknowledgement at the time of filing, and the submittal could be cancelled so that another submittal could be made. (6) In its preface to the proposed rule changes, the Office provides its justifications for the proposed mandatory electronic filing. However, the improved efficiency and reduced labor-intensive effort expected from mandatory electronic filing has not been accompanied by a reduction in the filing fees. If the Office's justification for mandating such a great burden on applicants and attorneys is correct, then a significant reduction in filing fees should now be made, concurrent with implementation of the proposed regulations, because much of the Office's filing burden (data entry, scanning, electronic formatting, etc.) is now being shifted to applicants and attorneys. (7) I vigorously dispute the alleged certification of the Chief Counsel for Regulation of the Department of Commerce that the proposed rule changes will not have a significant impact on a substantial number of small entities. In order to comply with the proposed rule changes, every entity filing trademark applications will have to purchase digital cameras to provide the capability of submitting the required specimens as attachments to trademark filings, will have to purchase optical computer scanners to provide the capability of scanning special-form drawings, and, most likely, will have to purchase high-end scanning and photo editing software so that the digital images can be manipulated into a form acceptable to the USPTO's new requirements. Furthermore, because of the USPTO's past improper emphasis on specific computer platforms and specific operating system versions on those specific computer platforms, smaller law firms and other small entities making trademark filings under these proposed regulations will, most likely, have to purchase additional and new computer equipment solely to comply with the new regulations. Each of these entities will also have to train its paralegals, legal secretaries, etc., and all involved in the filing of trademark documents, in the use of this new equipment and in the new procedures. Significant investment will have to be made in review for adequacy of the USPTO-provided form documents in specific fact situations, and procedures will have to be prepared in each law office, to replace the known procedures and already-prepared boilerplate documents that correctly and currently handle various fact situations. Clearly, these proposed new regulations will have a significant impact on a substantial number of small entities, and the certification by the Chief Counsel for Regulation is without basis in fact. For the above reasons, I strongly urge the USPTO not to adopt the proposed regulations, and that electronic filing be permitted but not mandatory. Russell H. Walker _____________________________________________________ PLEASE, PLEASE do not make the ETEAS procedure mandatory under our current signature rules. As a sole practitioner who is trying to become up-to-date, I would ask you to make some allowances for those of us with clients who are less sophisticated and very busy executives of small businesses. Even with my larger clients, I deal with people who cannot even fax an entire document back to me, much less email it successfully. Our lives are already so filled with monitoring procedures to track where our cases are in the Trademark Office, I cannot imagine adding steps to correct and locate filings in an electronic system. I am willing to cooperate to make the Office more efficient, but there are several problems with eteas filings: 1. Attorneys perceive that most of their clients would like some formality in the documents they sign; many clients feel that they are paying to have their attorneys handle the matter and they should not have to jump through technical hoops to do the attorney's job. 2. Many clients are not that technically astute and filing dates will be lost when the client signor missends the document; or worse yet, sends it directly to the PTO where the attorney cannot keep it on track; not all business people are comfortable with optical scanners and digital cameras or do not want to update their perfectly usable computer system to make it compatible with scanners and digital cameras. I personally do not yet feel comfortable filing an application with an image attachment. 3. The signature rules do not solve the problem. Only the application can be filed unsigned. Most outside attorneys do not want to be potential witnesses later in litigation by signing Statements of Use, Declarations Under Section 8, etc. when they do not have firsthand knowledge of the facts. 4. The declaration certifying that one is not technically capable is a real insult! How are we going to ask our clients, who we know will not be able to return an electronic document, to sign this? How can we sign this ourselves and show our client that its patent/trademark attorney does not have the capability of scanning an appropriate specimen? How do we justify missing a filing date while we try to find a computer in the office that has not been hit by the virus of the moment or a power failure? A client's rights in the trademarks of its brick and mortar business should not hinge on its computer capabilities. SUGGESTIONS: Electronic filing would be more acceptable to me, if the rules regarding signatures were made more flexible or interpreted more flexibly, and if it would be possible to file the old paper way in some circumstances. a. Perhaps the attorney could sign an eteas document as the party if the rules were interpreted to allow the attorney to rely upon a paper copy in his/her possession which has already been signed by the client. b. Perhaps all filings could be accepted unsigned, as are applications. c. Perhaps a discount in the fees could be made for filings by ETEAS. d. Perhaps a surcharge could be made for documents filed in paper. I do not believe it is fair under the U.S. Trademark Act and the standards of our system of government that only highly technical companies and attorneys should be able to obtain a federal trademark registration. Kathleen A. Skinner _____________________________________________________ These are the comments of Fross Zelnick, Lehrman & Zissu, P.C., a New York-based law firm that practices extensively in the field of trademark law. Our firm is the filing correspondent for more than 9,000 active trademark registrations and applications. More than 2,000 of these applications claim a foreign application or registration as a basis. Trade journal studies have for the past two years ranked our firm as the number one filer of trademark applications of any law firm in the country. We oppose the proposal to require electronic filing of all documents for which forms are currently available in TEAS. Many of our concerns have already been expressed by other parties who have
filed comments in opposition to the proposal, and we will not reiterate those
concerns. Our comments will instead address some additional issues. In particular
we endorse Violation of TLTIA Proposed Exception for "Foreign Applicants" The proposal creates an exception for filings by "persons described in 15 USC 1125(b)". This provision of the Lanham Act, commonly known as Section 44(b), provides that "[a]ny person whose country of origin is a party to any convention or treaty relating to trademarks, trade or commercial names, or the repression of unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the benefits of this section under the conditions expressed herein to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of a mark is otherwise entitled by this chapter." First, we do not understand why the Office believes that such an exception is required by international treaties and would request that the response to these comments clarify the PTO's position on this issue. Second, it is not clear whether this exception is intended to apply to any application filed by such an applicant (hereinafter referred to as a "foreign applicant"), or only to applications filed pursuant to Section 44. For example, we were told that the intention may be for this exception to apply to "foreign applicants" when they are relying on Section 44(d) and/or Section 44(e), but not when they are relying on Section 1(a) or Section 1(b). However, this is simply impractical. As amended by TLTIA, only five elements are required in order to obtain a filing date: the mark, the goods/services, the name of the applicant, an address for correspondence, and a fee to cover at least one class. The basis is NOT one of the required five elements. For that matter, the address and nationality of the applicant are also not one of the required five elements. This presents the question of how the Office will determine whether a paper application that is missing such information qualifies for the exception at all. Assuming that a paper application stating only the five minimum elements is granted a filing date, and the application is then amended either (1) by a "foreign applicant" to state a Section 1(a) basis or (2) by a US applicant who is now revealed not to have been entitled to the exception, will the filing date be cancelled? Also, how would this exception apply to combined basis applications, such as a "foreign applicant" who claims use in one class but relies on a home country registration for a second class; or the even more common case of an applicant who asserts a Convention priority claim under Section 44(d) together with an intent-to-use basis under Section 1(b) for goods in the same class? Moreover, since U.S. applicants can claim Convention priority under Section 44(d) if their first filing was made outside the U.S., can they claim the benefit of the proposed exception when they file such an application? Will the proposed exception for "foreign applicants" apply to all documents for which eTEAS forms are available, or only to applications and renewal applications? Inability to Encrypt Draft Applications These comments were prepared by J. Allison Strickland and other partners and staff of the firm. Thank you for the opportunity to submit these comments. Respectfully submitted, _____________________________________________________ The purpose of this letter is to present the comments of the Section of Intellectual Property Law of the American Bar Association (IP Law Section of the ABA) in response to the August 30, 2001 notice of proposed rulemaking concerning the mandatory electronic filing of trademark applications and other documents at the U.S. Patent and Trademark Office (PTO). While the IP Law Section of the ABA supports the continuing efforts of the PTO to refine the electronic filing system and to expand its use, we believe that the imposition of a mandatory requirement for electronic filing now is at best premature. The circumstances that prompted the proposal including escalating filings and backlogs no longer exist. We understand that trademark filings declined substantially in 2001 and that the PTO is now acting on trademark filings in record time. Furthermore, we understand that the use of electronic filing has grown substantially over the past year in spite of several unresolved technical issues that the PTO should address before considering a mandatory requirement. In the best of all worlds, with further technical refinement to the system and a concerted PTO effort to educate potential users, usage of electronic filing will reach the desired levels without a mandatory requirement. We discuss below some of the technical issues that must be addressed before the PTO gives any consideration to a mandatory system. We also highlight some concerns regarding the proposed rules for administration of mandatory electronic filing in the event the PTO ultimately imposes a mandatory requirement. We also suggest that before imposing a mandatory requirement the PTO consider providing a financial incentive to encourage electronic filing, one that is truly an incentive and not a penalty against paper filers. Technical Issues The PTO must address technical concerns in at least the following related areas before considering a mandatory system: electronic signatures, fees, special-form drawings and transmission of documents from point to point prior to filing. With regard to signatures, currently it is difficulty to affix and preserve an electronic signature when a document must be transmitted between the person preparing the document and the signer. Often, such as when an outside law firm prepares the document for the client's signature, a document must be transmitted back and forth between the parties electronically. The current system for doing so is awkward at best. The PTO must work with users of the system to develop a system whereby documents can be transmitted in a flexible and fluid fashion. Attorneys and their clients should be able to send documents back and forth without the need to reenter data or reattach documents, and without the need to sign the documents again. The PTO has improved the signature function, but it is still far from perfect. For the record, we oppose a system that is dependent on attorneys signing documents on behalf of clients. Attorneys should retain the discretion to do so only when the individual attorney determines that such action is appropriate. Furthermore, a system that is largely dependent on scanning conventional signatures is inconsistent with a truly electronic filing system. With regard to fees, the PTO must implement an electronic system for the collection of fees which provides users of the system with an accurate accounting of payments, including a record of the amount, the client, the date and the particulars related to the filing. The current system, which relies on deposit accounts and credit cards, is inadequate in this and other respects. The PTO has indicated an intention to incorporate a capability for some form of electronic transfer of funds or electronic checks into its electronic filing system. The PTO must explore this and perhaps other options with potential users to develop a user-friendly system for collection of fees. With regard to electronic special-form drawings, an inordinate number are rejected during examination even though they are prepared in accordance with PTO rules and scanned in the PTO-prescribed format. The PTO must investigate and correct this problem. With regard to transmission of documents, again the PTO must refine its system to permit users to transmit documents freely prior to electronic submission to the PTO. Users must have the ability to draft, revise, proof, correct and sign documents, and transmit those documents between parties freely during that process. The users should be able to do so without the need to reenter data or reattach documents. This list of technical issues is by no means exhaustive, but merely illustrative of the need for the PTO to continue and to intensify its efforts, with the help of users, to refine and perfect the electronic filing system. The PTO should not consider a mandatory system unless and until all involved have carried this effort forward to its conclusion. Administration of a Mandatory System In the event the PTO does ultimately impose a mandatory electronic filing requirement, the ABA suggests that the rules governing this requirement ensure that no applicant will suffer the loss of a substantive right as a result of this requirement. If the PTO determines that a paper filing was improper, an Applicant or Registrant should be permitted to refile electronically with the benefit of the same filing date on which the paper filing was made. The proposed rule provides for only two exceptions to the mandatory requirement - (1) individuals without access to the Trademark Electronic Application System (TEAS) or without the technical capability to use TEAS and (2) persons described in Trademark Act § 44(b), 15 U.S.C. § 1126(b), foreign filers. We believe the exceptions are too narrowly drawn. It is impossible to anticipate all of the circumstances where an electronic filing will be impractical. For example, an applicant may wish to present an extensive evidentiary showing of acquired distinctiveness at the time of filing which may not be possible in electronic form. Of course, both the PTO and filers can experience systems interruptions or failures. There should be an additional exception covering any circumstance where good cause exists for a paper filing. The rule could specify examples of such circumstances without limiting the types of circumstances that might qualify. Furthermore, as to the foreign-filer exception, we understand that the basis for proposing this exception is that the Trademark Law Treaty (TLT) in its present form bars imposition of a mandatory electronic filing requirement. The PTO apparently takes the position that the TLT only governs its requirements which apply to filers from other member states, and not domestic filers. Whether or not this is true, the adoption of a regime for foreign filers that complies with TLT, and a different regime for U.S. filers that does not comply with TLT sets an undesirable precedent for U.S. practice, and potentially for other member countries. It also violates the spirit and purpose of TLT, that is, the establishment of a simple and uniform system for trademark filings in member countries. The PTO should take action within the TLT framework to amend the Agreement to permit mandatory electronic filing, if the PTO ultimately determines that it is necessary. This issue will certainly arise elsewhere, and the approach of member countries should be consistent. Conclusion In conclusion, the IP Law Section of the ABA is grateful for the opportunity to comment on the mandatory electronic filing proposal. Our members look forward to working closely with the PTO to refine and expand use of the electronic filing system -- we hope without the need for regulatory coercion. Sincerely, _____________________________________________________ These comments are derived from comments and ideas presented by certain members of the Trademarks and Unfair Competition Committee of the Boston Patent Law Association. Overall, we applaud the Trademark Office for leading this effort in efiling. The ultimate goal of achieving a paperless office is commendable and an important objective, although seemingly unrealistic. We also find the prompt response from the Trademark Office upon efiling an application to be a considerable advantage, and hope that accuracy improves with the automated system. That being said, we question whether the Trademark Office and the Internet are prepared to handle mandatory trademark filings. 1. Security Concerns of Relying on the Internet. Issues concerning the security and resilience of the internet are of particular concern. The internet is not a sufficiently reliable means of communication. The internet is plagued with viruses and system outages, which can result in a loss of internet service for unexplainable and unexpected lengths of time. Important filing deadlines, and, consequently, important trademark rights of clients, can be lost on account of a system failure. Additionally, electronic filing does not provide the filing attorney the same level of security as Express Mail. Once an application is delivered in Express Mail, the filing attorney is assured that the filing deadline was satisfied. Depositing a trademark filing into the internet may not always provide the same level of assurance. Aside from system outages, there also can be problems and delay with the transmission of the electronic filing, the transmission of credit card information or deposit account information, potentially resulting in missed deadlines, double filing for the same trademark and incurring duplicative charges to one's credit card and/or deposit account. 2. Verification Concerns Raised by Internet. Additionally, there is concern that a mandatory efiling system will make it more difficult to communicate with the Trademark Office concerning a particular trademark application and that even just the correction of clerical errors will become a costly and time consuming endeavor. Also, there is concern that efiling will create uncertainty as to whether the document as filed will be received and read by the Trademark Office's system in the same form. Finally, there is particular concern with the signature requirements. There are many reasons why lawyers may not sign an application on behalf of a client, particularly, to ensure that the application is accurate and complete. Allowing a signature to follow the efiling can create a new set of problems and complications for the filing lawyer and the Applicant, as well as the Trademark Office. Most importantly, we do not want to see our clients lose precious rights as a result of problems relating to the TEAS or the Internet. Perhaps the best course of action is to further encourage efilings through monetary incentives and to slowly phase in any mandatory filing requirements. One suggestion is to establish a schedule phasing in trademark documents for mandatory efiling over the next several years, rather than mandating such changes cold turkey, and, additionally or alternatively, allow for hard and/or soft copies to follow any efiling. This will allow the lawyers and the Trademark Office to become accustomed to the requirements and to work out the kinks and problems as they arise. Thank you for your consideration. Respectfully submitted, _____________________________________________________ I am writing to voice my strong objection to the proposed mandatory electronic filing system. I would instead suggest adopting a dual filing fee structure that encourages electronic filing. The reasons for my objection include the fact that most clients are still unfamiliar and/or uncomfortable with electronic signatures, and in the past I have had difficulty transmitting an eTeas form to a client for signature and getting the client to follow instructions for properly signing and returning the document. Presently, I only file eTeas applications for Section 1(b) applications which do not require a specimen, and I do so without the applicant's signature, which I supply with a later filed paper declaration. (I am unwilling to sign a document that might make me a potential witness.) I am still nervous about sending specimens as a file attachment and some specimens don't scan that easily. I have also heard that the attachments don't always reach the Office with the application. I would like some assurance that this is not going to be a problem in the future if we are forced down this road. Finally, our office has experienced about five to ten days this year where our on-line communications capability was shut down, twice due to virus attacks and at other times due to equipment problems and problems with successive DSL providers, one of which went bankrupt. It would be comforting to know that we can file a paper application when we have to, even if we move to mostly electronic filings. Thank you in advance for considering my comments. Sincerely, _____________________________________________________ Intellectual Property Owners Association (IPO) submits the following comments in response to the U.S. Patent and Trademark Office's proposal to make electronic filing of trademark documents mandatory with certain limited exceptions. While IPO enthusiastically supports the PTO's adoption of electronic filing, IPO believes that the PTO should not yet make electronic filing mandatory. We believe the reduced trademark workload and certain unresolved issues and practical difficulties make mandatory electronic filing premature. 1. Dramatic Increase in Filings Not Realized. In the Federal Register notice of August 30, the PTO stated that the number of documents filed in the Office has increased substantially in recent years, and that the Office expected a 25 percent increase in trademark filings in 2001 over 2000. Revised projections by the PTO, however, indicate a much lower rate of filings in 2001 and 2002. We understand that first action pendency has now been shortened dramatically. Accordingly, the urgency to implement the proposed rule appears to have decreased. 2. Rules Related to Declaration of Inaccessibility are Unclear. The proposed rules provide that electronic filing would not be required of applicants or attorneys who filed a declaration regarding their inability to access or use TEAS. However, the proposed rules do not make clear whether such declarations would be accepted routinely, or whether they would have to be examined at added expense. Also, the proposed rule also does not define the extent of the inaccessibility exception. IPO believes it should be made clear whether this exception includes temporary inaccessibility resulting from computer server malfunctions, telecommunications disruptions, and systems crashes. 3. Signature and Payment Procedures. IPO members have suggested that certain refinements are needed in the electronic system. Consideration should be given to the electronic signature process on forms other than the trademark application itself, and to steps in attaching a specimen to an application. Also, it has been noted that a mark cannot be amended once a draft electronic application has been prepared and transmitted from an applicant's attorney to the applicant. If the mark in the application needs to be amended, a new draft application must be prepared from scratch. IPO applauds the PTO's concerted efforts toward electronic filing of all trademark applications. At this time, however, IPO cannot support a mandatory requirement. While the PTO continues to implement improvements to its electronic system, IPO suggests that the PTO consider establishing a fee differential for paper filing as a further incentive to file electronically. Respectfully submitted, _____________________________________________________ On behalf of the Rio Grande Intellectual Property Association, we request that electronic filing of trademark applications remain voluntary until all mechanical and technical limitations of the current electronic filing system are resolved. The Rio Grande Intellectual Property Association represents intellectual property practitioners in New Mexico. While our members support the conceptual notion of electronic filing, we have concluded that the Trademark Office's current electronic filing is inadequate to justify a mandate to make electronic filing mandatory. Specifically, we submit the proposed rule is inappropriate for at least the following reasons: Evidently, little field testing has questioned the additional costs to be incurred by clients whose counsel will have to not only prepare a conventional application, but also convert that application to electronic fields to satisfy electronic filing. Because of the rapidity of upgrades to various software associated with computers and the Internet on which electronic filing depends, the likelihood of perversely bizarre text errors engendered by incompatible software - and by the unknown causes of glitches everyone experiences in electronic transmissions - what the prosecuting attorneys thought they filed will not be recorded as received by the Trademark Office. A concomitant issue is that the Office does not fax back the filed application to counsel, but a one page receipt. On those occasions when an application proceeds to publication without an office action, applicants' counsel will have no idea that there may be content errors in the application received by the Office. And, of course, Murphy's law dictates that any such error will be significant. Accordingly, counsel will have to sign a declaration to be retained permanently in the client's file that the application counsel drafted in conventional form before converting it to field codes is the one annexed to the declaration, just to "prove" what the application was intended to have recited. There appears to be no justification why U.S. applicants should be singled out for not being allowed to file applications via mail, while foreigners may. The e-TEAS system adopted by the Trademark Office requires applicants to use GIF or JPG imaging formats, despite the fact that the rest of the world uses PDF. Selection of those protocols should be replaced by PDF. The Patent Office electronic filing system was recently corrupted nationwide because of a change in Microsoft Internet Explorer. The program induced a plethora of unwanted problems, causing the system as a whole to become unreliable. Until the Office can warrant that similar problems have been eliminated from the Trademark Office system, electronic filing should remain voluntary. The signature acquisition process must be perfected. The present signature system will lead to unwarranted delays and confusion. Challenges to proofs of specimens in later litigation will undoubtedly lead to invalidity of numerous trademarks and service marks unless a fool-proof method for filing design marks and logos is implemented. As stated, these are but a few of the reasons why we believe the proposed rule is premature. Thank you. Yours truly, _____________________________________________________ This is in response to the Notice of Proposed Rule Making regarding the proposal by the Office to amend its rules to make electronic filing of trademark documents mandatory. I am in general in favor of initiatives by the Office to streamline its operations and reduce its operating costs, and I do not object in principle to filing trademark applications electronically. My main objection to the proposed rule making arises from the mechanisms for payment of fees. The PTO Deposit Account system is a model of how not to run a financial institution. My firm does not use its Deposit Account for routine payment of fees. On the contrary, it uses the Deposit Account as a last resort, against the possibility of inadvertently omitting a check or inadvertently including a check for an insufficient amount, in order to keep the number of account entries to a minimum. Nevertheless, substantial time has to be taken each month to review the Deposit Account statement to check for incorrect charges and request refunds. Refunds take months to process and frequently no refund is ever received and no explanation is given in support of a denial of the refund request. There is no satisfactory procedure for inquiring about refund requests. Although refund requests are sometimes acknowledged with a letter identifying an individual responsible for processing the refund, this does not always mean that the named individual can be reached or can provide information. By maintaining only a small balance on deposit, I attempt to protect my firm against large losses. My experience with the Deposit Account makes me dread the prospect of having to have sufficient funds on deposit to cover an active trademark filing program, and using the Deposit Account system for every trademark activity that requires a fee. Based on past experience, substantial sums will be drawn without justification and will disappear without trace. I am equally concerned by use of a credit card or electronic funds transfer to pay official fees for trademark activities. I am fearful of the possibility that funds would be drawn from my credit card account or bank account with the lack of care for accuracy that characterizes withdrawals from my firm's Deposit Account. I therefore request that the rules should be amended to allow applicants and practitioners to control more closely the payment of fees. One possibility would be to allow the applicant or practitioner to pay fees by check within a fixed time period after a filing date has been accorded to an application. I recognize that this does not streamline operations but I consider it essential that a payment mechanism that does not give the Office control over when, how and in what amount fees are withdrawn from my account should be available until I am confident that the Deposit Account system operates reliably. John Smith-Hill _____________________________________________________ Morrison & Foerster LLP takes this opportunity to offer its response to the August 30th 2001 notice of proposed rule making concerning the mandatory electronic filing of Trademark applications for registrations and other documents at the U.S. Patent and Trademark Office (PTO). While we recognize the concerns facing the PTO as it attempts to process the exorbitant number of trademark documents filed in the year 2000, we believe that mandatory e-filing is not the proper resolution. The process, as designed, is not appropriate for large law firms and it is not cost-effective for clients. Moreover, there are certain logistical problems which currently exist. We will address each area of concern in turn. I. Problems for large law firms Additionally, because the email that is sent to clients from the web site is sent from PrinTEAS@USPTO, not the preparer, we are also concerned that clients who want to amend the document will not have notice that cannot simply "Reply" but rather they need to "Forward" the document to us with their proposed amendments. It would be helpful if such a notice were included in the notice line that states "You have been sent this message requested by "XX" as an e-signature service from Trademark Electronic Application System (TEAS), U.S. Patent and Trademark Office." For example, the PTO could add the statement "If you need to make any changes to the document, please FORWARD those comments to "XX". Moreover, in order to maintain our financial records properly, it is essential that there be a place to include the client reference number on all forms and on the deposit account information. Currently, because there is no place on the documents for this information, once the deposit account is charged, we have to look in a separate database to locate the application and client number in order to accurately charge clients for PTO fees. This process is time-consuming. That is why with our paper files we are extremely cautious about including the client1matter numbers in the proper form. II. The E-TEAS System is Not Cost-Effective The cost of filing documents would increase in other ways as well. For example, we have concerns regarding the inclusion of specimens in the e-filing applications. The requirement that electronic drawing/specimen pages be submitted in either .gif or .jpg format also adds to the time and therefore expense of filing applications and other documents. As many electronic specimens/drawings for clients are received in .pdf format, an additional action must be taken in order to convert these to .gif or .jpg format. This process increases the preparation time for the application and thus is more costly for our clients. It would be helpful if the PTO could refine the system so as to allow electronic specimens/drawings to be filed in .pdf and other formats as well. The majority of our paper trademark applications are prepared by a legal assistant, reviewed by an attorney, and forwarded to the client for review and comment. When amendments must be made, the legal assistant thereafter quickly makes the change on a Word document. We have found, however, that under the E- TEAS system amendments are much more cumbersome. The "Modify" icon that exists on the E-TEAS system is often non-functioning. As a result, the process of making a minor change on a document after it has been sent to the client for review and signature becomes cumbersome. In those types of situations, in order to obtain the applicant's signature on the final applications, all of the information would need to be entered again on a new form, downloaded and resent to the applicant for review and signature. This process is certainly time-consuming and expensive. Additionally the cost of preparing applications increases as a result of the fact that in the E- TEAS system, there does not appear to be a template accessible so that the law firm's name, address and power of attorney information are already included in the application and other documents. Rather, we must manually input this information each individual document. For our paper filing, of course, we have several available templates that limit the time for preparation. III. Logistical Problems Consequently, until the E- TEAS can be refined so as to address all of the above-mentioned problems, we believe that the PTO should continue to encourage but not mandate, the e-filing of trademark applications and other documents. If the PTO's goal is to increase use of the system, an effective alternative would be to offer financial incentives (e.g. raising the per class rates for paper filers while maintaining rates for e-filers). This would allow individuals and law firms to assess which system is the most cost effective to file applications and other documents with the PTO. Thank you for the opportunity to submit comments on the proposed mandatory e-filing rules. Very truly yours, _____________________________________________________ I write concerning the proposed mandatory electronic filing of all documents for which forms are currently available via the TM Electronic Application System (TEAS). With respect to the filing of trademark applications and other documents, I note that there may be situations not covered by the forms. In such situations, it would be helpful to have a "comments" section allowing the applicant or an attorney to include text comments to address the particular situation. For example, it is necessary at times to insert "at least as early as" prior to the first use date. Is this allowed in the proposed electronic forms? Very truly yours, _____________________________________________________ The Patent and Trademark Office (PTO) recently published a Notice of Proposed Rule-making in which the PTO proposes to make electronic filing of trademark documents through its Trademark Electronic Application System (TEAS) mandatory. I have the following comments to offer. My comments concern the methods for payment of the fees associated with these electronically filed trademark documents. Fees must be paid with most, if not all, the documents that will be subject to the electronic filing requirement. TEAS currently allows for payment of fees only by credit card or PTO deposit account. Payment by electronic funds transfer is to be added soon. If filing by TEAS is made mandatory, then fee payment only by credit card, deposit account, or electronic funds transfer will become mandatory This limitation on the methods of payment appears to conflict with 37 CFR §
1.23, by which the PTO accepts a variety of other methods of payment: The PTO's proposed rule-making amends 37 CFR § 1.10(a) to eliminate Express Mail as an option in regard to TEAS filings. However, the PTO proposal fails to add a comparable limitation to § 1.23 in regard to methods of payment. Aside from amending § 1.23, I think that there is a more fundamental problem.
The PTO may not have considered whether the PTO would be violating federal monetary,
banking, and financial laws by establishing a filing system that does not accept
such tenders as U.S. currency, bank checks, bank drafts, and money orders in
payment of mandatory government fees. For example, 31 U.S.C. § 5103 provides
in relevant part: A paraphrasing of this statute is printed on Federal reserve notes: "This note is legal tender for all debts, public and private" (emphasis added). Besides the legalities involved, there is a practical consideration. The PTO cannot assume that all applicants and registrants are able to use the specific fee payment methods. Applicants and registrants unable to do so would not be able to obtain filing dates for their trademark documents with the potential loss of substantive rights. A possible solution might be to combine a fee payment restriction in § 1.23 with an addition to proposed new § 2.22 to recognize a further exception to mandatory electronic filing for those who are unable to use the specified fee payment methods. Alternatively, the PTO might argue that the current § 2.22 exceptions, lack of TEAS access and lack of TEAS technical capability, encompass the inability to use the specified fee payment methods. If the PTO takes this last option, it should be made clear. A fee payment exception in § 2.22 might not resolve the matter, however. It still would remain that an applicant or registrant unable to use the specified fee payment methods must assume the burden of submitting an affidavit or declaration in this regard. I think that the PTO also should consider whether discriminating in this manner against those using other fee payment methods also may violate monetary , banking, and financial laws. The PTO may have to leave the method of fee payment to the discretion of the applicant or registrant, in which case the PTO would have to provide an electronic filing system that accommodates all legally acceptable methods of fee payment.
Sincerely, _____________________________________________________ |
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