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Monday Dec 06, 2010

Enhancing Electronic Communications for Trademarks

Blog by Under Secretary of Commerce for Intellectual Property and Director of the USPTO David Kappos


This past Friday, December 3, the USPTO welcomed members of AIPLAIPO, INTA and members of the public in a roundtable discussion to highlight best practices for trademark prosecution in the current electronic environment and obtain feedback on the state of electronic communications within Trademarks.  I was pleased to join in part of the meeting, and listen to a very productive, thoughtful discussion.  If you missed it, we’ll be posting the archived webcast here in the coming days.


Based on the common goals of creating the most efficient Trademark review system for brand owners and reducing the use of paper, USPTO leaders and roundtable participants engaged in a lively and productive exchange of ideas.  The discussion topics ranged from the evolution of the USPTO’s e-commerce systems over the past 10 years to addressing the reasons why trademark practitioners choose to use—or choose not to use—the Trademark Electronic Application System (TEAS)


Participants who authorize e-mail correspondence during trademark prosecution discussed docketing software, correspondence routing and record keeping practices. They also debated the perceived advantages and limitations of receiving e-mail correspondence, as well as changes the USPTO can consider implementing to incentivize the authorization of e-mail as a correspondence tool.


Roundtable participants also discussed advantages of filing documents using TEAS and ways to encourage the further reduction of paper filings.  Trademark Commissioner Lynne Beresford indicated that USPTO is considering charging fees for paper filing as one means of aligning fees with cost drivers (as you can imagine, paper filings are expensive and inefficient for the Office to handle).


The group came up with a list of best practices for trademark applicants and the USPTO to consider, including creating appropriate back-ups and contingencies in operations to handle unexpected circumstances, setting up internal client communication reminders, using TEAS sooner to avoid delays, and working with IT departments to make sure USPTO e-mails get through to the appropriate applicant contacts (attorney, paralegal, secretary, etc.).  We plan to post that list very soon, as we think it will be helpful for TEAS users.


Without question, the nature of e-commerce is ever-evolving.  As new electronic tools and processes are made available to the marketplace, the USPTO will continue these forums to ensure that trademark owners reap the rewards of these tools.   


While I’m pleased that the vast majority of trademark filers are interfacing with the USPTO electronically, I’d like to get that number to 100 percent.  What can we do at the USPTO to enable and encourage all trademark filers to use the Web to prosecute their applications and communicate with the office?  Feel free to post your comments here, or send them to


Thanks, as always, for your feedback.



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