From: Billheimer, Susan [SBillheimer@PattonBoggs.com]
Sent: Monday, April 28, 2008 2:40 PM
To: TM Mailing Rules
Comments to to Proposed Changes in Rules Regarding Filing Trademark Correspondence by Express Mail or Under a Certificate of Mailing or Transmission
The PTO justifies these changes by implying that concerns about delays are no longer relevant because "electronic filing provides a better alternative". This is not true, the concerns about delays are still relevant and still problematic and generate uncertainty for paper filers. While the e-filing alternative does provide instant feedback about acceptance, the PTO's rulemaking even states that problems have occurred where e-filers did not wait for the "Success" page and mistakenly believed that their documents were submitted when they were not. So really, e-filing becomes a "better alternative" for many practitioners - especially those used to paper filing - only after "timely filed" assurances are eliminated.
Eliminating the certificate of mailing procedure for a division request makes applicants worse off. How will Requests to Divide and accompanying statement of use/extension requests be handled? Requests to divide are currently only permitted on paper. It is also not possible to electronically file Statements of Use and Extension requests that are submitted with a Request to divide. Will the PTO make it possible to e-file the SOU (date of receipt before that of division request) while paper-filing the Division request (with date of receipt being receipt at PTO, unknown by applicant) - or make division requests availble online? It seems that until the PTO accepts all filings electronically, it is premature to drop the certificate of mailing procedures.
Susan Billheimer | Associate | Patton Boggs LLP 2550 M St, NW | Washington, DC 20037
Phone: 202.457.5316 | Fax: 202.457.6315
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