April 11, 2005

COMMENTS OF 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.

Neill Levy