Cochran Freund & Young LLC

From: Christie Carson []
Sent: Tuesday, April 29, 2008 5:41 PM
To: TM Mailing Rules
Cc: Bill Cochran; James Young; Sam Freund
Subject: 37 CFR Parts 2 and 7 Proposed trademark rule change


William W. Cochran

Samuel M. Freund*

James R. Young

Paul M. Thompson†

Christopher P. Whitham


*Licensed in New Mexico

†Registered Patent Agent

An Intellectual Property Law Firm





Telephone: (970) 492-1100

Facsimile: (970) 492-1101

Denver Metro: (303) 288-4596

4450 Arapahoe Avenue

Suite 100

Boulder, Colorado 80303

Telephone: (303) 448-8889

Facsimile: (303) 415-2500



April 29, 2008


Commissioner for Trademarks

P.O. Box 1451

Alexandria, Virginia 22313-1451


Attention: Ms. Mary Hannon

Via electronic mail to:

Dear Ms. Hannon:

Please consider the following comments regarding "The proposed Changes in Rules Regarding Filing Trademark Correspondence by Express Mail or Under Certificate of Mailing or Transmission" as found in the Federal Register Volume 73, Number 41, issued on Friday, February 29, 2008 Proposed Rules.

We recommend that the proposed rules be reconsidered since they would place an undue burden on our Law Firm. Our Firm is located in Northern Colorado and cannot always rely on our Internet Service Provider to provide access to the internet. Additionally, on several occasions we have been unable to obtain access to the United States Patent and Trademark Office website. In these circumstances the Patent Office website was either down or overloaded. Clearly, if we are unable to gain internet access, an electronic document may not be able to be timely filed.

In addition, a partner and attorney in our firm also experienced a problem recently with a Response to an Office Action regarding use and specimens while our client, the applicant, was out of the country in Turkey, where he had access to the internet, but not to a fax machine. The problem was that, under the current electronic system, there was no way that the applicant, who was represented by an attorney, could electronically sign a declaration or statement of facts relating to specimens and usage of a mark that we wanted to present to the Examining Attorney, because he would have had to click on the selection that he was not represented by an attorney in order to electronically sign the statement, which was not true. At the same time, the attorney, who could electronically sign, was not the proper person to sign the statement of facts, because it was the client, not the attorney, who had direct knowledge of the facts in the statement. As a consequence, the electronic form prohibited the submission of the fact statement/declaration by the applicant, and it could not be submitted by the attorney. This restriction in the electronic form needs to be changed to accommodate transmission of electronically signed documents by applicants who are represented by attorneys.

The United States Patent and Trademark Office needs to continue to accommodate submissions of signed affidavits or declarations by applicants by the date of deposit as Express Mail and/or certificate of mailing and to expand its electronic form capabilities to accommodate a variety of problems and needs. When the electronic system is glitch-free and dependable for everyone in all circumstances, people will gravitate to it naturally without being forced and without the likelihood that they will lose rights to which they are entitled under the law.

Thank you for your consideration.

Very truly yours,

/William w. Cochran/ /Samuel M. Freund/ /James R. Young/

William W. Cochran Samuel M. Freund James R. Young