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Public Comments on Notice of Inquiry Regarding Adjustment of Fees for Trademark Applications: Bruce Burdick

From: Bruce Burdick [mailto:burdlaw@gmail.com]
Sent: Tuesday, August 21, 2012 6:50 PM
To: TM FR Notices
Subject: docket number (PTO-T-2012-0029

Please consider my responses to the following questions posed in the above request for comments. I restate the question with my responses:

    1. Fees for filing an application for registration of a trademark are currently set at:

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    $375 per class for filing by a paper application;

    $325 per class for filing electronically using TEAS;

    $275 per class for filing electronically using TEAS Plus

(additional requirements apply, including authorizing email communication from the USPTO, agreeing to file all subsequent documents electronically, and selecting goods/services from a pre-approved entry in the U.S. Acceptable Identification of Goods and Services Manual).    Given the objective to increase end-to-end electronic processing of trademark applications, the significantly higher cost of processing paper applications, and the ability of the USPTO to offer some fee reductions, what fee amounts would you consider reasonable for the three existing methods of filing?

1-Response: I would propose 375/325/275 be revised to 500/400/300/200 (500-paper, 400-TEAS w/no email, 300 TEAS w/ email, 200 TEAS PLUS)

I think a tripling of the difference is needed to sufficiently motivate a near-complete move from paper and to TEAS PLUS.  And, as such a move progresses, I would expect that the burden of handling increasingly abnormal paper applications will continue to grow and the burden of handling non standard descriptions will grow.  That is because the PTO is becoming (and wants to become) more and more paperless, and increasingly automated, and to devote available space to productive use rather than storage of paper , to minimize non-standard descriptions and special handling, and to minimize scanning and conversion requirements.  The built-in error checking of TEAS PLUS should be utilized both for the benefit to the PTO but even more because it is beneficial to applicants and their attorneys.  I think the 500/400/300/200 breakdown more accurately reflects actual PTO costs and round numbers are easier to remember for everyone involved both in the Office and outside.

 

    2. How much of a discount do you consider appropriate for the proposed TEAS application fee discount if the applicant authorizes email communication and agrees to file all responses and other documents electronically during the prosecution of the application?

2-Response: $100 is a good TEAS w/ email vs. TEAS w/o email discount, and, round numbers are easier to remember.

 

     3. If you generally file trademark applications using TEAS, but not TEAS Plus, how much of a proposed discount would motivate you to authorize email communication and agree to file all responses and other documents electronically during the prosecution of a trademark application?

3. Response: N/A I strictly use TEAS PLUS. I think it malpractice to do otherwise in view of the clear advantages to the applicant in error checking, reduced pendency, easier communication, greater reliability, higher standardization, and reduced cost.

 

    4. If the TEAS Plus fee were reduced and remained the lowest fee, and the discount TEAS option were also offered, what would be the impact on the TEAS Plus filing level--i.e. would you be more likely to choose TEAS Plus as the lowest fee, or to select the discount TEAS option with its less burdensome requirements?

4-Response: I would still use TEAS PLUS. I have never found the TEAS PLUS requirements more burdensome. In fact, I think there is always a strategic plus to TEAS PLUS and to using standard descriptions. There are, of course, situations where the standard descriptions do not exactly fit, but they are to me always close enough that any variations between the actual good/services and standard descriptions are easily explained by the need to find the closest standard description. I have never seen it to be a litigation concern.

 

     5. The cost of processing paper filed applications is substantially higher than electronically filed applications. If you generally file paper trademark applications, would you continue to do so even if the paper application fee were to increase, and why?

5-Response: N/A The increased reliability and efficiency of TEAS PLUS makes it malpractice, in my opinion (not unreasonably exercised) to use paper.

 

     6. What advantages and disadvantages do you see in a fee structure that includes the TEAS application fee discount and a significantly higher fee for paper-filed applications?

6-Response: Advantages - Encourage applicants to make the choice that is ALWAYS the best choice for them, TEAS PLUS; reduce space requirements at the PTO; make automation easier and easier, allow even better error-checking routines to be implemented; to avoid attorneys committing malpractice (see prior answers), better existing error checking; reduced pendency; easier communication; greater reliability; higher standardization, and reduced cost. Disadvantages - disproportionately affects older attorneys, older applicants, small businesses, rural applicants, those who dislike computers and those few still stubbornly clinging to the past.

--
Bruce Burdick
Creating Protections & Protecting Creations SM

BURDICK LAW FIRM, 3832 Omega Street, Alton, IL 62002
beb@burdlaw.com   www.burdlaw.com 618-462-3450 Fax 618-208-1712
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Last Modified: 10/12/2012 7:06:42 AM