Public Comments on Notice of Inquiry Regarding Adjustment of Fees for Trademark Applications: John B. Farmer

From: John Farmer []
Sent: Monday, October 15, 2012 9:59 AM
To: TM FR Notices
Subject: Comment on Notice of Inquiry Regarding Adjustment of Fees for Trademark Applications

Last Revised October 15, 2012

In response to the "Notice of Inc. where he Regarding Adjustment of Fees for Trademark Applications" (the "Notice") I submit the following comments.

John B. Farmer's Comments on Notice of Inquiry Regarding Adjustment of Fees for Trademark Applications

I. I salute the effort of the USPTO to strongly push trademark applicants to conduct all application communications with the USPTO electronically. It is appropriate for the USPTO to charge substantially higher fees for applicants and registrants who insist on making paper filings. Indeed, presuming that there is no legal obstacle to doing so, I believe the day is fast approaching, and may already have arrived, when the USPTO should require that all such filings be made electronically with a possible exception for situations where electronic filing simply is not possible because of the nature of what must be filed.

II. That being said, the questions posed in this Notice didn't quite raise what I believe is the key issue for deciding whether to use TEAS or TEAS Plus. The reason why I always use TEAS instead of TEAS Plus is twofold: (A) I want to pay the filing fee only for one class in order to see whether the applied for mark will draw a substantive rejection, such as a likelihood-of-confusion rejection, before paying a filing fee for each class in the application; and (B) I often find that the description of goods/services in the ID Manual doesn't hit the mark for a client's goods/services, so I often disregard the ID Manual and hand craft a description of those goods/services and then deal with any objections to that wording raised by the trademark examining attorney.

III. I did not have any problem with promising through TEAS Plus that I will make all future filings electronically and communicate with the USPTO only electronically. I do not use TEAS Plus for the purpose of holding open any ability to file paper with the USPTO.

IV. The small discount offered for TEAS Plus filings over TEAS filings is not enough to incentivize my clients to use TEAS Plus, because of the reasons I discuss above in section II. Indeed, I cannot imagine that the USPTO to be able to offer a large enough discount to make that worthwhile. When you consider the hourly rate of an experienced trademark attorney, you almost would always spend more billable time hunting through the ID manual to try to assemble a list of goods/services (which often does not describe the goods/services accurately anyway) than you would hand-crafting a goods/services description. It is almost always more cost-efficient, and more accurate, to just submit a detailed description of the goods/services at issue.

V. Indeed, consider the importance of not overstating or misstating your goods/services. If the description you submit is ill-fitting or two broad, you could be subject to claims of fraud or other attacks that might weaken or destroy your mark registration. For that reason, I custom tailor the description of goods/services to make certain it exactly matches the client's situation rather than use "off the rack" descriptions from the ID Manual.

VI. I recommend you create an option and discount in which the applicant agrees to conduct all correspondence with the USPTO electronically but in which the applicant is not bound to use the ID Manual or to declare the classes in which her goods/services fall.

Respectfully submitted,

John B. Farmer

Leading-Edge Law Group, PLC

804.343.3221 -- direct voice

Wilton Park

4905 Dickens Road

Suite 100

Richmond, Virginia 23230