March 04, 2008

On Friday, the USPTO announced via the Federal Register (link below) that it plans on amending its rules of practice regarding obtaining a filing date as of the date that trademark correspondence is deposited as Express Mail with the U.S. Postal Service. Currently, Section 2.198(a)(1) of the Trademark Rules of Practice state that the following types of correspondence do not obtain a filing date of the date of deposit because the forms are available via its Trademark Electronic Application System (“TEAS”):

- applications for the registration of trademarks
- amendments to allege use under section 1(c) of the Trademark Act
- statements of use under section 1(d)
- requests for extensions of time to file a statement of use under section 1(d)
- affidavits or declarations of use under section 8
- renewal applications under section 9
- requests to change or correct addresses

The proposed amendments to the trademark rules are to include the following types of trademark correspondence within Section 2.198(a)(1) of the Trademark Rules of Practice as exclusions because TEAS forms are now available:

- preliminary amendments
- responses to examining attorneys’ Office actions
- requests for reconsideration after final action
- responses to suspension inquiries or letters of suspension
- petitions to revive abandoned applications under 37 C.F.R. § 2.66
- requests for express abandonment of applications
- affidavits or declarations of incontestability under section 15
- requests for amendment of registrations under section 7(e)
- requests for correction of applicants’ mistakes under section 7(h)
- Madrid-related correspondence filed under §§ 7.11, 7.14, 7.21, 7.28, or 7.31
- appointments or revocations of attorney or domestic representatives
- notices of withdrawal of attorney

Similar changes are proposed to Section 2.197(a)(2) to provide that the certificate of mailing and certificate of transmission procedures do not apply to several types of documents. According to the USPTO, “because electronic filing eliminates delays caused by mailing, manual data capture and paper processing, TEAS documents are processed more quickly and entered into the automated systems (and therefore made available to Office employers and members of the public who search Office records for conflicting marks) sooner than their paper counterparts." The USPTO is accepting comments through April 29, 2008.

Federal Register Excerpt: LINK

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Mark Reichel
Reichel IP LLC

I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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