President Steven W. Miller Procter & Gamble Co. Vice President David J. Kappos IBM Corp. Treasurer Douglas K. Norman Eli Lilly and Co. April 29, 2008 Hon. Jon Dudas Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO) Mail Stop Comments— Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451 ATTN: Mary Hannon Submitted by email to: tmmailingrules@uspto.gov Re: IPO Comments on Changes in Rules Regarding Filing Trademark Correspondence by Express Mail or Under a Certificate of Mailing or Transmission, 73 Fed. Reg. 11079 (February 29, 2008) Dear Director Dudas: IPO welcomes the opportunity to comment on the proposed rules that would amend 37 C.F.R. 2.197 and 2.198. IPO is a trade association representing owners of patents, trademarks copyrights and trade secrets in all industries and fields of technology. Our current membership includes more than 250 companies and 10,000 individuals involved in IPO through their companies or in other member classes. The proposed rule changes would eliminate the current express mail and certificate of mailing procedures for all trademark filings for which a form is available in the USPTO’s Trademark Electronic Application System (“TEAS”). IPO is a strong advocate for the “paperless” filing of trademark documents and understands that approximately 90% of all correspondence with the USPTO is currently filed electronically. Although computers have benefited trademark practice greatly by speeding communication and providing easy access to information that was previously difficult to obtain, computer mishaps still occur and it is often beneficial to provide low tech back-up procedures. The express mail and certificate of mailing procedures provide trademark practitioners with an important safeguard by which they can obtain a filing date when electronic filing is difficult or impractical. For example, these procedures can be, and are, utilized by practitioners experiencing difficulties with their computer or network or encountering problems with the USPTO website. Although the USPTO Rules do provide mechanisms for obtaining a filing date when the TEAS system is down, these procedures are not available for other potential technical and computer problems that may be encountered. In those instances, practitioners may be forced to pay for and file a formal petition to revive an application, thereby increasing the administrative burden on the USPTO and practitioners. Directors Marc S. Adler Rohm and Haas Co. Angelo N. Chaclas Pitney Bowes Inc. William J. Coughlin Ford Global Technologies LLC Timothy Crean SAP, AG Pamela R. Crocker Eastman Kodak Co. Mark W. Croll Illinois Tool Works Inc. Gerald V. Dahling Sanofi-Aventis Paul T. Dietz Seagate Technology, LLC Luke R. Dohmen Boston Scientific Corp. Bart Eppenauer Microsoft Corp. Joseph T. FitzGerald Symantec Corp. Scott M. Frank AT&T Gary C. Ganzi Siemens Water Technologies Corp. Michael L. Glenn Dow Chemical Co. Bernard J. Graves, Jr. Eastman Chemical Co. Gary L. Griswold 3M Innovative Properties Co. Krish Gupta EMC Corporation Harry J. Gwinnell Cargill, Incorporated Jack E. Haken Koninklijke Philips Electronics N.V. Stephen D. Harper Henkel Corp. Robert P. Hayter United Technologies Corp. William B. Heming Caterpillar Inc. Dennis R. Hoerner, Jr. Monsanto Co. Carl B. Horton General Electric Co. Philip S. Johnson Johnson & Johnson Charles M. Kinzig GlaxoSmithKline David J. Koris Shell International B.V. Noreen A. Krall Sun Microsystems, Inc. William C. Lee, III Coca-Cola Co. Jonathan P. Meyer Motorola, Inc. Jeffrey L. Myers Adobe Systems Inc. Richard F. Phillips Exxon Mobil Corp. Peter C. Richardson Pfizer, Inc. Mark L. Rodgers Air Products & Chemicals, Inc. Robert R. Schroeder Mars Incorporated Jeffrey A. Sedlar General Motors Corp. Suzanne Shema ZymoGenetics, Inc. David Simon Intel Corp. Russ Slifer Micron Technology, Inc. Brian W. Stegman BASF Corp. Brian K. Stierwalt ConocoPhillips Thierry Sueur Air Liquide Pamela Tondreau Hewlett-Packard Co. James J. Trussell BP America, Inc. Michael Walker DuPont Stuart Watt Amgen, Inc. General Counsel Eva H. Davis Kirkland and Ellis, LLP Executive Director Herbert C. Wamsley 1255 Twenty-Third Street, NW, Suite 200 . Washington, DC 20037-1174 T: 202-466-2396 . F: 202-466-2893 . E: info@ipo.org . W: www.ipo.org INTELLECTUAL PROPERTY OWNERS ASSOCIATION IPO Comments Regarding Filing Trademark Correspondence (73 Fed. Reg. 11079) April 29, 2008 Additionally, the proposed changes could have a significant impact on those who may be less familiar with the USPTO’s electronic filing system, including pro se applicants and registrants, foreign applicants and registrants, and practitioners who do not specialize in trademark law. Also, practitioners outside the Washington, D.C. area would not have the option of a paper filing, while those in Washington, D.C. would still have the option of hand delivery for filings. Further, those outside the U.S. Eastern Time zone may not have the option of working with the TEAS helpdesk in instances when they are experiencing computer problems or difficulties with the TEAS system outside U.S. Eastern Time business hours. We believe the potential hardships would outweigh the administrative benefits brought about by a slight increase in electronic filings. Given the relatively small number of such filings and the importance of providing an alternate means for obtaining a filing date through “paper filing” procedures, IPO opposes the proposed changes. Thank your for your consideration of our views. President - 2 -