Public Comments on Notice of Inquiry Regarding Adjustment of Fees for Trademark Applications: Frank Terranella

Sent: Tuesday, August 28, 2012 5:00 PM
To: TM FR Notices
Subject: Docket No. PTO-T-2012-0029 - Notice of Inquiry Regarding Adjustment of Fees for Trademark Applications

Dear Trademark Colleagues:

I think that trying to incentivize electronic communication at this point is beating dead horse. Those who are going to communicate electronically are already doing it and those who are not will not be persuaded by discounts.

I also do not think that any amount of discount will persuade those of us who do not use TEAS Plus to begin doing so. The reason is that the TEAS Plus standards are impossible to comply with. If the only requirements were to communicate electronically and use the ID Manual for identification, I and many other attorneys would use it. The problem is that we have tried using TEAS Plus only to be burned when the Examiner takes back the discount because we did not anticipate all the prior registrations that should be claimed, or we did not anticipate all the words in the mark that needed translation, or we did not anticipate that the mark might be considered to name a person and we therefore did not state that the mark did not identify a person, or we did not provide a complete enough description of mark. The list goes on and on, but I think the point is made.

In short, the discount offered is not worth the pain of having to explain to a client that they now have to pay a penalty because their lawyer is not a mindreader and cannot reasonably anticipate every examination issue that might arise in an Examiner's mind.


Frank Terranella

Abelman Frayne & Schwab

666 Third Avenue

10th Floor

New York, NY 10017

(212) 949-9022 (Voice)

(212) 949-9190 (Fax)