- ,-International Trademark Association Washington Office IffFA' 1990 M Street,NW,Suite 340, Washington, DC 20036 5{+1-202-223-6222 t: +1 -202-785-0687 COMMENTS OF THE INTERNATIONAL TRADEMARK ASSOCIATION'S USPTOSUBCOMMITTEEON THE USPTO'SNOTICE OF PROPOSEDRULEMAKING DATED FEBRUARY 29,2008 The USPTOSubcommitteeherebyrespondson behalf of the IntemationalTrademark Association("INTA") to the United StatesPatent and TrademarkOffice's ("USPTO") February29,2008Noticeof ProposedRulemakingentitled"Changesin Rules RegardingFiling TrademarkCorrespondence by ExpressMail or Under aCertificateof Mailingor Transmission." A. TheProposal The USPTO proposesthat the expressmail and certificateof mailing or transmission proceduresno longer apply to documents for which specific TrademarkElectronicApplication Systems("TEAS") forms are available. Specifically,the USPTO proposesto amend the TrademarkRules of Practiceto providethat certificate of mailing or transmission procedures and/orexpressmail no longer applyto the following forms set forth in the chart belowfor clarity and ease in reading: FORM PROPOSED PROPOSEDEXCLUSIONFROM EXCLUSION CERTIFICATEOFMAILING/TRANSMISSION FROM EXPRESS MAIL (1) preliminary Yes Yes amendments (2) office action Yes Yes resDonses (3) requestsfor Yes Yes reconsiderationafter final action (4)responsesto Yes Yes suspensioninquiriesor letters of suspension (5) petitions to revive Yes Yes abandonedapplications under 37 C.F.R.2.66 (6)requestsfor express Yes Yes abandonment (7)section15 Yes Yes declarations/affrdavits I Main Office 655 Third Avenue, 1Oth Floor, New York, NY 10017-5617 USA +1-212-768-9887of: +1-212-768-7796 owww,inta.orgr 161oqin,".otn (8)requestsfor amendmentunder Section 7(e) (9)requestsfor correction of applicant's mistakes under section 7(h) (10)certain Madrid correspondence (11)appointments or revocationsof attorney or domestic representatives (12)noticesof withdrawal of attornev (13)requeststo change or correct addresses (14)international applications (15)applicationsfor reeistrationsof marks (16)amendmentsto alleee use (17)statementsof use (18)requestsfor extensionsof time to file statementsof use (19)Affidavits or declarationsof use under Section 8 (20)Renewal applications under section 9 B. INTA'S Response Yes Yes Yes Yes Yes Does not currently apply. Yes Yes Yes Yes Does not currently Yes apply. Yes Does not currently apply. Does not currently Does not currently apply. apply. Does not cunently Yes aoplv. Does not currently Yes apolv. Does not currently Yes apply. Does not currently Yes apply. Doesnot currently Yes apply. INTA supportsthe USPTO's ongoing goalof increasingelectronicfilings. INTA agrees that the proposedrule change will promoteincreasedelectronicfiling and will therefore likely improve the qualityandintegrityof critical data in the Office's automatedsystems. INTA supportsthe proposedrule change affecting all the proposedforms except for large filings and special form drawings which still face technological challenges under the currentTEASsystem.For those categories of filings, INTA has concerns that the proposedrule change will reduce trademark practitioners' andpro se Applicants' filing flexibility by increasing the filer's financial burden and/or effectively shortening the deadlines for non-Washington,D.C. applicants/ attorneys. An undesirable adverse effect of this rule may also be the inhibition of evidentiary submissionsaccompanyingoffice action responsesor requests for reconsideration.The Subcommittee requeststhat the new rules address and offer solutions for thesepotentiallyadverseeffects on applicants/attorneys. (1)The Technological Limitations of TEAS Unduly Burden Applicants The new rules placean undue burden on applicants and their attorneys as they relate to: (a) filings that contain supporting evidence or multiple attachments such as office actionresponsesandlot requests for reconsideration and (b) amendmentsto special form drawings. The current limitationsof TEAS do not permitthe system to accept any document exceeding threemegabytes.Thistechnologicallimitation makes it difficult to attach largedocuments, multiplepagesor special form drawings. While one can overcome the three megabyte limitation by dividing attachmentsinto three megabit or lessgroups,such an exercise can take a significant amount of time resulting in increased legal fees and/or costs for the applicant. Furthermore, it is not currently possible to insert images within the text of an argument such as side-by-side comparison of marks. Whether technologically or time prohibitive,in these situations, applicants/attorneys find it preferableto file these documents on paper. The proposedrulemaking effectively forces applicants with large filings who do not reside in the Washington,D.C. areato file (a) a week or two early if using the US Postal Service; (b) atleast a day early if they are willing to incurthecost of an overnight courier to ensure timely delivery; or (c)to utilize the certificate of facsimileprovisionunder 37 C.F.R.$2.195(c)which will likely result in a significant increasein faxes received by the USPTO. (2) Elimination of These Mailing Options Would Result in a DisparateImpact on Non-Washingtono D.C. Area Applicants/Practitioners In addition to the purposestatedin theNotice, a beneficial effect of the certificate of mailing provision is to equalize applicants/attorneys who work throughout the country and thosein the Washington, DC area by affording filing dates to correspondence whenplacedin the U.S. Mail rather thanby actual receipt at the USPTO. In short, the nearest U.S. mailbox has long been the equivalent of the front door of the USPTO to applicants/attorneys in areas outside of Washington,D.C. By eliminating the certificate of mailing/express mail procedureas an option when electronic filing is not preferable, non-Washington area applicants/attorneyswill experience a disparate impact compared to applicants/attorneys in the Washington, D.C. area. For applicants/attorneys outside of Washington, D.C., the eliminationof a certificate of mailing procedureeffectively shortens the response time to an office action by at leastoneweek and possiblytwo weeks or requires the added expense of using a courier service. (3)Recommendations Before implementing the proposedrule changes, INTA recommends the USPTO consider the following: o Increasing size of attachments to TEAS forms from three megabyes to a higher number to allow for bulky documents to be attached as one document or explore other means to submitlarge attachments to the USPTO server such as how the USPTO issues Office Actions; o Increasing the size of special form drawings or explore othermeans to submit large special form drawings to the USPTO server; o Allowing continued use of express mail/certificateof mailing for officeactionresponses, requestsfor reconsideration and special formdrawings;and who wish to use it. r Clariffing that 37 C.F.R. $2.195(c)will remain available to applicants/attorneys Implementingthe above recommendations themajor issues resulting from eliminating will address the express maiVcertificateof mailingprocedures. C. Conclusion INTA's USPTO Subcommittee appreciatesthe opportunity to submit its comments on the proposedrule change with regard to changes in rules regarding frling trademark correspondence by express mail or under a certificate of mailing or transmission, and looks forward to participatingin any further discussionon this issue. Should the USPTO have any questionsor commentsconcemingINTA's response or desire testimony or further information,pleasecontact Michelle Sara King at mking@inta.orgor 202-223-0989.