Public Comments on Notice of Inquiry Regarding Adjustment of Fees for Trademark Applications: Kevin W. Grierson, Esq.
From: Kevin Grierson [mailto:email@example.com]
Sent: Friday, August 17, 2012 11:27 AM
To: TM FR Notices
Subject: Response on possibility of lowering most application fees.
I am an intellectual property attorney with FSB FisherBroyles. I file almost solely via TEAS or TEAS-Plus. I have added my comments below each question:
1. Fees for filing an application for registration of a trademark
are currently set at:
$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?
KWG: I would propose the following:
Paper filing: $500 per class. If you really want to "incentivize" people who haven't jumped to electronic filing yet, you need to make it really painful for them to send in paper filings.
TEAS: $250 (or whatever discount is feasible given the PTO's budget)
TEAS-plus: $75 lower than the TEAS fee.
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?
KWG: I'd give a $50 discount for agreeing to file everything electronically without filing TEAS-plus.
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
KWG: See above--a $50 discount would be helpful. The problem with TEAS-plus isn't the up-front agreement to file electronically but the possibility of additional fees being charged if the examiner doesn't like the application for some reason.
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?
KWG: I'd probably file mostly TEAS with a discount. The number-one impediment to TEAS-Plus filings by a trademark practitioner is the "gotcha" potential of TEAS-Plus: if you don't cite all the similar marks the applicant owns, or if the specimen is rejected, or any number of other things go wrong, you can find yourself stuck with a $50 per class fee to change from TEAS-Plus to TEAS. Almost invariably the procedural nature of this objection leads clients to believe that the trademark attorney is at fault and to balk at paying the additional $50 per class. It's far easier to pay the extra $50 up front (and charge the client for it then) even if you use the ID manual than it is to go back and ask the client for additional money for the filing fee later.
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?
KWG: The folks who still file on paper don't really have a good reason for not filing electronically. The two biggest factors I see are (a) some folks are just technological dinosaurs, and (b) some attorneys see the paper version of filing as better enabling them to preserve the idea that an attorney is needed for the filing. While it's true that more people try to file pro se now, I don't think these reasons are valid (and the early notification of notice of publication argument? It is pure BS, and was even before you guys implemented the hard-to-decipher notifications of notices and whatnot).
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?
KWG: If the fees are different enough, even clients that are not terribly cost-sensitive will start to pressure their attorneys to file electronically. I really don't see a downside as long as the TEAS system is able to handle any possible kind of filing (i.e. there are no kinds of marks or filings that still require a paper filing or otherwise make an electronic filing impractical).
Kevin W. Grierson, Esq.
Admitted to practice in Virginia and before the United States Patent and Trademark Office
FSB FisherBroyles, LLP
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