Public Comments on Notice of Inquiry Regarding Adjustment of Fees for Trademark Applications: Michael F. Brown

From: Michael Brown []
Sent: Friday, August 17, 2012 10:29 AM
To: TM FR Notices
Subject: Comments on fee proposal FR-2012-08-16 2012-20127


1.Given the objective to increase end-to-end electronic processing of trademark applications, the significantly higher cost of processing paper applications, and the ability of the USPTO to offer some fee reductions, what fee amounts would you consider reasonable for the three existing methods of filing?

The present fee structure seems reasonable to me. I can see setting the paper-filing fee at some increment over TEAS sufficient to pay someone at the PTO to open the mail and type the application into TEAS. Once that's done, the application can proceed exactly the same as a TEAS application. If it costs the PTO more than $50 to open the paper and enter it into TEAS, then I'd support a fee increase to capture that increment in costs.

Given that only 1% of applications are filed on paper now, I question whether this percentage could be reduced much, if at all, by any further fee discounts for TEAS/TEAS+. I can't understand why anyone would file on paper today to start with, and can only assume that these are people who have no access to computer networks or have some objection to their use. I would oppose any increase in the paper-filing premium which is much in excess of the cost of handling the paper and entering the application information into TEAS.

2. How much of a discount do you consider appropriate for the proposed TEAS application fee discount if the applicant authorizes email communication and agrees to file all responses and other documents electronically during the prosecution of the application?

I already do this anyway, and have done so for everything which could be filed electronically. The last time I filed on paper was back before divisions could be done electronically. Now they can, and, as far as I know, so can essentially every other form you'd need to file during prosecution.

Why would anyone switch to paper after filing through TEAS, if they didn't have to? Perhaps it would be worthwhile finding the cases where a TEAS filer switched to paper, and asking those filers why they switched. Given the pain of doing paper filing for follow-on paperwork and the ease of using TEAS already, I wonder if any minor discount at the time of filing would make any difference at all.

Perhaps it would make more sense to impose a handling fee for filing paper responses in TEAS-filed cases, payable with the response, so long as the response could have been filed through TEAS.

3. If you generally file trademark applications using TEAS, but not TEAS Plus, how much of a proposed discount would motivate you to authorize email communication and agree to file all responses and other documents electronically during the prosecution of a trademark application?

None. The reason I choose to use TEAS and not TEAS+, when I do, has to do more with the time required to select the descriptions, not the agreement to do everything electronically. For clients with many items of goods (especially overseas clients, who tend to file with longer lists of goods than domestic clients), it simply takes too long to search-and-select through TEAS+ instead of just copying and pasting the text they send into TEAS. For applications with only a small number of standard items, I already use TEAS+.

Bear in mind that for law firms, the USPTO fee discount is not really an issue, compared to the time needed to comply with the requirements. If my fee for filing an application is fixed, as it usually is, and the client gets the $50 discount in USPTO fees while I take much more of my time to enter the application, there's just no benefit to me in using TEAS+ for long applications. For clients who pay hourly, it's the client who has no incentive. If I use TEAS+ for long lists of goods, they'll pay more for my time to search and select the goods than they'd save in the discount in USPTO fees.

4. If the TEAS Plus fee were reduced and remained the lowest fee, and the discount TEAS option were also offered, what would be the impact on the TEAS Plus filing level-i.e. would you be more likely to choose TEAS Plus as the lowest fee, or to select the discount TEAS option with its less burdensome requirements?

None, for me. As above, I choose TEAS+ only for cases with small numbers of goods with standard descriptions. The electronic filing is a given, whichever method I'd use.

5. The cost of processing paper filed applications is substantially higher than electronically filed applications. If you generally file paper trademark applications, would you continue to do so even if the paper application fee were to increase, and why?

I never file on paper.

6. What advantages and disadvantages do you see in a fee structure that includes the TEAS application fee discount and a significantly higher fee for paper-filed applications?

None, from my point of view, although I'm sure my clients would appreciate a discount in TEAS fees.



Mike Brown


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