April 11, 2005
NEILL A. LEVY, ESQ. ON THE PROPOSED REDUCED FILING FEE REQUIREMENTS
PUBLISHED IN FEDERAL REGISTER VOL. 70 NO. 66, APRIL 7, 2005
Most of the requirements for a $50 reduction of the filing
fee from $325 down to $275 relate to procedural matters that are within
the control of the attorney or the applicant.
Examples are paying a filing fee for all classes at the same
time as filing a multi-class application, and responding to office actions
within two months.
However one requirement relates to a substantive, not
a procedural matter. Trademark law and regulations require
the applicant to provide an accurate and succinct description of the
goods or services. The
PTO’s Goods and Services Manual contains a large number of acceptable
identifications of goods and services.
However, I have found in my trademark practice that a surprising
number of goods and services are innovative and have not yet made their
way into the Manual. For example, a recent filing for the name
of a newly invented mechanical device that enables a waterskier to jump
higher and further.
Under proposed Rule 2.22(8),
of the Requirements for a TEAS Plus Trademark Application, an applicant
must download an identification or identifications from the Goods and
Services Manual to qualify for the reduced filing fee. This excludes new types of goods and services
introduced into the U.S. economy that have not yet been included in the Manual.
It is a pity that the most innovative trademark filers
will be deprived of the benefit of the reduced fee.
The U.S. has always prided itself in being on the cutting edge
of new inventions and novel services introduced into commerce. Perhaps the USPTO can find a way to include
these filers in the new benefit while still retaining the labor saving
devices of the TEAS Plus rules.
For example, proposed Rule 2.22(8) could be amended to
provide for compulsory downloading from the Goods and Services Manual
with an exception for goods and services that are not yet included in
the Manual due to their novelty or for any other reason. The Examining Attorney would have discretion
to decide whether the goods or services are truly new to the Manual
or whether the identification is just an unnecessary variation of goods
or services already described in the Manual.