Public Comments on Notice of Inquiry Regarding Adjustment of Fees for Trademark Applications: Jack E. Haken

From: Haken, Jack []
Sent: Friday, September 21, 2012 12:14 PM
To: TM FR Notices
Subject: Comments re Docket No. PTO-T-2012-0029

In response to Docket Notice PTO-T-2012-0029, Philips Intellectual Property and Standards submits these comments on behalf of Koninklijke Philips Electronics N.V. and its associated companies (collectively "Philips"). Philips typically files several hundred new trademark applications each year. The a vast majority of these applications is first filed from outside of the United States under the Madrid Protocol and designate the United States among many other countries. We also file a small number of US trademark applications using TEAS; but we do not presently use TEAS Plus.

Our internal document handling system is fully electronic and we believe that we already achieve substantial cost savings by use of electronic filings systems in the United States.

To our knowledge, there is no way to directly enter the TEAS system upon an initial overseas Madrid Protocol filing, thus we first enter the TEAS environment by designating the USPTO electronic system option boxes either in our response to the first U.S. office action or upon filing a power of attorney form in the U.S.

►Philips strongly supports the USPTO electronic filing initiatives, but see no direct benefit from present and proposed US fee structures which do not and would not affect our filing costs under the Madrid Protocols. In fact, we question whether the proposed incentives would indirectly dis-incentivize use of the Madrid Protocol. We urge the USPTO to find other incentives which fairly promote the use of electronic systems by all trademark applicants.

We have anecdotal reports from our trademark prosecution staff that the USPTO does not consistently use electronic communications for applications that have been designated for TEAS and that some paper communications from the Office appear at random times in an otherwise electronic case. These lapses potentially increase our docketing costs and we urge the USPTO to investigate and rectify the situation.

From our viewpoint, the most significant benefit which might flow from our use of TEAS plus would be a potential reduction in average time to registration on the assumption that the descriptions of goods and services are from a pre-approved list. However, in our usual case we see greater benefit from having consistent goods and services description across a family of registrations of a mark in many countries and are thus more driven by our experiences from years of international practice.

►Thus we do not believe that fee discounts would be a significant factor that would affect our decision to use or forego use of TEAS Plus (even if the TEAS Plus approved list were available in the context of US prosecution of Madrid Protocol applications) ; either under the present fee schedule or at any level that seems practical. We contemplate that the cost of attorney time need to evaluate the legal consequences of using pre-written descriptions in multiple countries would exceed any discount available when total application filing fees are only in the range of several hundred dollars.

Respectfully submitted

Jack E. Haken

Vice President

Philips Intellectual Property and Standards