Highlights of TEAS 5.5 Release

The following significant changes to TEAS are scheduled to be implemented on December 5, 2015. Because portable and e-signature forms allow 14 days for signature, it is important that you be aware of this scheduled outage so that you can plan ahead to avoid additional work. Users should file all recently created portable forms and e-signature forms by 5:59 a.m., Saturday, December 5 ET. Customers unable to do so will be required to start the process again with updated forms.  If you have any questions or concerns regarding the release, please contact TEAS@uspto.gov.

All Forms

The email notification associated with the “email text form to second party for signature” approach has been updated to specify that the form must be signed and the filing to the USPTO completed within 14 days based on the minute the e-signature process was started.

The attorney docket number field has been restricted to 12 characters.  This restriction is due to the character limitations in the database that the USPTO uses to store the data associated with the application and registration records.  Although TEAS can accept longer docket numbers, the backend systems cannot accept more than 12 characters.  The USPTO will expand the allowable number of characters per field in the Next Generation filing system, which is under development. As a workaround, you may enter the docket number in the "miscellaneous statement" section of the forms.  Although the docket number will not be uploaded into the database, it will be part of the permanent record viewable in TSDR. 

The forms have been updated to allow for military addresses in address fields.

The forms have been enhanced to allow for the removal of telephone numbers.  Customers will no longer be required to provide a new telephone number when removing an existing telephone number.

The bug that prevented the “Firm Name” in the domestic representative section of the forms from appearing on the text form, Input Table, and XML on the Validation Page has been fixed.  The firm name also now appears on the filing receipt.

A new pop-up warning message has been added when users attempt to delete a Section 44(d) filing basis.  The message is as follows.

By unchecking the Filing Basis 44 (d) box, you are deleting the priority claim and Section 44 (d) basis from the application.  If instead you want to retain the priority filing date and proceed to publication without providing a foreign registration, go back and recheck this box.  

Then, check the box below that reads "At this time, the applicant does NOT intend to rely on Section 44(e) as a basis for registration, but wishes only to assert a valid claim of priority.”

Additionally, the text next to the Section 44(d) check box has been revised as follows.

NOTE: Section 44(d) provides a basis for filing and a priority date, but not a basis for registration.  Check this box if Section 44 (d) is NOT the only basis and the applicant does NOT intend to rely on Section 44 (e) as a basis for registration at this time, but wishes only to assert a valid claim of priority.  If this box is selected, the application will not be suspended to await the submission of the foreign registration.

The handwritten signature approach has been enhanced to display the mark on the form printed for a pen-and-ink signature.

Initial Application Forms

ID Manual Enhancements

The ID Manual search function within TEAS initial application forms has been updated. Search results for the ID Manual are now listed in the results table according to the relevance of the searched term(s) as determined by an algorithm. For example, the search table for a search of the term shoes will list “Shoes” in Class 25, an “exact match,” first because it is the most relevant description containing only the searched term. A search of two terms, e.g., athletic shoes, will display an exact match first, followed by other results with both terms, if any.  The relevant search term will be highlighted in yellow.

The USPTO works together with its international partners, the Japanese Patent Office (“JPO”), the European Trademark Office (“OHIM”, the Office for Harmonization in the Internal Market), the Korean Intellectual Property Office (“KIPO”), and the State Administration for Industry and Commerce (“SAIC”) of the People’s Republic of China, to establish and maintain a list of identifications of goods or services which are acceptable to all offices. This collective effort is known as the “TM5” Trademark Identifications and Classifications Project (formerly known as “Trilateral”). The mutually agreed upon identifications are included in ID Manual and are designated by a “T” in the “TM5” column of the results table. The TM5 column will be blank if the entry has not been accepted by all of the TM5 partners. For further information about TM5 entries, see TMEP §1402.04.

Please note that certain entries included in the ID Manual outside of the TEAS Plus application form are not available for use within TEAS Plus.  The TEAS Plus version of the ID Manual intentionally does not include the following:

  1. items classified in Classes A, B, or 200, because those marks are not eligible for filing under TEAS Plus;
  2. any listings that are designated with a "000" in the Class field, because correct classification is required under TEAS Plus and classification for these listings varies according to the subject matter or additional information provided within the listing; and
  3. the Class 25 listing of "Clothing, namely, ...," because this entry is too open-ended, and could result in items being listed that do not truly fall within this class.  TEAS Plus applications require users to select listings for specific clothing items, e.g., shirts, pants, etc., consistent with USPTO identification policy for Class 25 clothing.

The TEAS ID Manual has also been enhanced to allow the same goods/services entry with curly brackets multiple times.  Curly brackets are used in ID Manual entries to indicate the type of information that an applicant must specify to render the identification acceptable.  Curly brackets usually include wording such as “specify” or “indicate” to convey the type of information required and generally include examples of acceptable wording.   The information in the curly brackets must be provided by the applicant as part of the identification.  For example, acceptable identifications based on the ID Manual entry “Pharmaceutical preparations for {specify disease or condition to be prevented or treated or the health goal to be achieved}” include “Pharmaceutical preparations for treating diabetes” and “Pharmaceutical preparations for the prevention of osteoporosis.”  After the TEAS 5.5 deployment, users will be able to add both identifications to the TEAS form.

The free-form text option for adding goods/services in the TEAS Regular/TEAS RF form has been enhanced to include an expand/collapse checkbox for using the optional ID Assistance tool.  For additional information on this tool, see http://www.uspto.gov/trademarks-application-process/filing-online/id-assistance-tool-instructions.   

Other Enhancements:

The initial application and response forms have been enhanced to require proof that a “nonprofit organization” exists under the appropriate state statute or foreign country law in the Miscellaneous Statement field if an applicant’s entity type is identified as a “nonprofit organization.”  For additional information, see TMEP §803.03(c)

The “null” error bug in the initial application form was fixed that prevented certain users from validating the form after attaching an image.

Response Forms

The bug in the Response to Office action, Request for Reconsideration after Final Office Action, and Response to Suspension Inquiry or Letter of Suspension that inserted a blank Section 44(e) claim in the text form on the Validation Page has been fixed. 

The response forms have been enhanced to allow an applicant to amend from the Supplemental Register to the Principal Register. 

Correspondence and Attorney/Domestic Representative Forms

The Change of Correspondence and Revocation of Attorney/Domestic Representative forms were enhanced to allow for the updating and/or modification of docket numbers in multiple records.

Miscellaneous Forms

The Voluntary Amendment Not in Response to USPTO Office Action form has been updated to provide a checkbox allowing attorneys to bypass the submission of a signed declaration if none is required. The new checkbox appears as follows:

[ ] I hereby elect to bypass the submission of a signed declaration, because I believe a declaration is not required by the rules of practice. I understand that the examining attorney could still, upon later review, require a signed declaration.

WARNING: If the examining attorney has required a signed declaration in a final office action, bypassing this requirement may result in your application being abandoned for failure to submit a complete response.

Registration Maintenance/Renewal Forms

The “null” error bug in the Post Registration forms which prevented certain users from validating the form after attaching an image was fixed.

The option to request issuance of a registration based on “rights acquired by concurrent use of the mark” was removed from the Section 7 Request for Amendment or Correction of Registration Certificate form. 

The bug in the Section 7 Request for Amendment or Correction of Registration Certificate form that allowed applicants to use the form when the mark was not in the proper status has been corrected and users must now enter a U.S. Registration number in order to access the form. 

The bug in the Response to Post-Registration Office action form that allowed users to validate the form when no information was provided has been fixed.  This bug was present only for those using the Google® Chrome browser.