From: R. Kunstadt, P.C. [firstname.lastname@example.org]
Sent: Thursday, April 24, 2008 1:53 PM
To: TM Mailing Rules
Subject: [Docket No. PTO-T-2007-0051] RIN 0651-AC18 Changes in Rules
Regarding Filing Trademark Correspondence by Express Mail or Under a
Certificate of Mailing or Transmission
Our Ref. No.: 1-024 eeb
e-mail to Commissioner for Trademarks (Att. Ms. Mary Hannon)
Re: [Docket No. PTO-T-2007-0051] RIN 0651-AC18 Changes in Rules Regarding Filing Trademark Correspondence by Express Mail or Under a Certificate of Mailing or Transmission
This constitutes the comments of R. Kunstadt, P.C. on the captioned proposal for changes in the rules regarding filing trademark correspondence. R.
Kunstadt, P.C. is an intellectual property firm located in New York, New York. We are active in filing trademarks on behalf of clients in the pharmaceutical, clothing, computer, beverage and other industries, in the United States and foreign countries. These comments represent the opinion of the firm and the undersigned, but are not presented on behalf of any clients of the firm.
The proposed rules will tend to result in a de-facto mandatory electronic filing system, something that should only be considered when reliability and security issues facing Internet transmission have been overcome, and when the Trademark Office develops an interface which is compatible with industry-standard office automation programs. The proposed rules penalize applicants who do not use electronic filing, by making it harder for them to prosecute their applications than under current procedures.
The Internet is not sufficiently reliable to make it the primary means of communication with the Trademark Office. The Internet is plagued by viruses and hackers. Security of transmission via the Internet cannot be assured by present technology.
The specific electronic interface used by the Trademark Office, appears to be designed for an inexperienced trademark applicant. It is not compatible with industry-standard office automation programs. Many firms (like ours) which are active on behalf of a large number of sophisticated clients, have made significant investments in state-of-the-art office automation technology. Requiring trademark correspondence to be prepared and filed by the present electronic system, would represent a technological step backward. The Office's online forms can only be filled in word-by-word using a computer keyboard like a manual typewriter. They are not designed to take advantage of industry-standard office automation systems based on relational databases.
These comments were prepared by the undersigned Robert M. Kunstadt, with the assistance of R. Kunstadt, P.C. staff. I am a graduate of Yale University and the UCLA School of Law. I studied intellectual property law under the late Professor Mel Nimmer at UCLA. I held a post-graduate research fellowship at the Max Planck Institute for Patent, Copyright and Competition Law in Munich, Germany from 1975 to 1977. In 1978, I commenced work as an associate at the New York office of the IP firm Pennie & Edmonds. I worked at Pennie & Edmonds, in the capacity of associate and subsequently partner, until 1997. In 1997, I established the present firm, R. Kunstadt, P.C., in order to leverage the benefits of new technology to provide prompt and efficient service to intellectual property clients. From 2006 to 2007, I was Editor-In-Chief of THE TRADEMARK REPORTER, the legal journal of the International Trademark Association (INTA).
Our small law office (total staff of five) has invested over $20,000 in office automation technology. Our principal office automation program is PROLAW. PROLAW is a SQL database which works on the "one-write" principle, as do many relational databases. When data is entered into the program for any purpose, it is immediately accessible at the press of a button, to be reused for any other purpose. For example, when a trademark application is prepared we do not re-type the client's name, address, state of incorporation, etc. All that information resides in the "contacts" module of the database, and is available for use in the "matters" module for the preparation of a trademark application. Similarly, the database fields for international class, goods, client address of record, etc., are filled in once for an application. The application form is then automatically generated by PROLAW, at the push of a button, drawing upon the information resident in the database. The same is true of extension of time forms, and the like. PROLAW uses a "mail merge" process to insert the data into the form.
In the past, trademark forms were prepared using a word processing program such as WordPerfect. Law firms kept separate databases, either paper databases or computerized, which duplicated the information in the trademark forms. This led to inefficiency, because errors crept in due to discrepancies between the information typed into the word-processed trademark forms and the information that had been keyed into the database.
Significant staff time was required to weed out these errors and correct the database. This adversely impacted upon client service and increased the cost of trademark legal services to clients, due to the need to pay personnel to correct the database.
The great advantage of a state-of-the-art office automation database such as PROLAW is that a managing attorney can be assured that having once checked the data, it will be correctly replicated for all purposes throughout the program and in any printed form it generates. This leads to a great savings of time and consequent savings for our clients. In particular, using the PROLAW office automation program, we can be assured that there is a perfect correspondence between the trademark information contained in our database, and the information printed on the forms we submit to the Trademark Office.
DEFICIENCIES OF THE PROPOSED NEW RULES
Sophisticated users do not fill out trademark forms by typing individual words into blanks, one at a time, the way the proposed system requires one to work. Sophisticated users use powerful databases which generate a form at the push of a button. Therefore, to de facto require sophisticated users to file their correspondence by means of the current electronic filing system, would effectively put the trademark profession back by forty years. Back in the 1960s, the state of the art was to fill out a trademark form word-by-word on an IBM electric typewriter.
We personally experienced these deficiencies when we moved our office in March 2008 and we used the Office's online form to enter our firm's new address for each of the trademark applications and registrations handled by us (around 90). Filling out and submitting the electronic Change of Address Forms took us more than one and a half hours. We had to retype our firm's address information five times, since the system only allowed up to 20 applications/registrations per form. Furthermore, sometimes the system takes a long time to notify if your submission was successful, so, in the meantime, you are left with uncertainty.
It would undoubtedly be possible to develop electronic filing systems that would be compatible with state-of-the-art office automation systems. Indeed, a very simple such system would merely require the user to email ascii text in a standardized format to the Trademark Office. To maximize the potential for compatibility with the diverse office automation systems being used, we suggest that the Office consider to use the most "plain vanilla" interface possible for electronic correspondence: simple ascii text without HTML formatting codes. An example of this format is the PRINTEAS form previously used by the Office.
SECURITY ISSUES OF ONLINE COMMERCE
Every week, we hear news about worms or viruses having infected Internet servers worldwide. These worms or viruses are capable of spreading not only by email, but also by web browsers such as those utilized by the Office's electronic filing system. They are also capable of installing a "back door"
onto an infected system, leaving the system vulnerable to further hacker attacks. Indeed, even the most careful users of anti-virus software face risks from use of the Internet, since there always is a lag between the time when a new worm or virus is detected, and the anti-virus software can be updated. For that reason, this firm does not permit our network to be connected directly to the Internet. All Internet communication is conducted from a separate, standalone terminal. We view this as a necessary measure to protect the security of valuable intellectual property information stored on our network.
Therefore, it seems inappropriate to de facto require all users of Trademark Office services, to correspond via the Internet. Until such time as better security can be assured for Internet transactions, the Office would be forcing users to bear risks which many people do not wish to incur.
For example, in February 2008, a Harvard Graduate School of Arts and Science web server that contained summaries of applicant data for entry to the fall
2007 academic year, summaries of housing applicant data for the 2007-2008 and 2006-2007 academic years, and administrator information was hacked by an outsider and compromised in a way that the data on the server could have been viewed or copied (source:
On March 17, 2008, Hannaford Bros. Co., the Maine-based supermarket chain disclosed that up to 4.2 million credit and debit card numbers, plus card expiration dates, had been stolen from its system between December 7 and March 10. The company also said that about 1,800 cases of fraud had been reported as a result of the breach (source: Computerworld, March 24, 2008 issue, p.6).
According to the April 14, 2008 issue of Computer World, p.16, malicious hackers are starting to focus on stealing credit card data while it is in transit (i.e., being transmitted from point-of-sale systems to payment processors in order to authorize transactions), instead of trying to take information that is stored on systems.
Moreover, according to the April 21, 2008 issue of Computer World, p. 10, security researchers estimate that more than 2,000 people fell victim to a scam, in which CEOs and other senior executives received emails purportedly containing subpoenas to testify in federal court.
Some of the key findings from the participants in the 2007 Annual Computer Crime and Security Survey are summarized below:
a) "The average annual loss reported in this year's survey shot up to
$350,424 from $168,000 the previous year. Not since the 2004 report have average losses been this high."
b) "Almost one-fifth (18 percent) of those respondents who suffered one or more kinds of security incident further said they'd suffered a 'targeted attack', defined as a malware attack aimed exclusively at their organization or at organizations within a small subset of the general population."
c) "Financial fraud overtook virus attacks as the source of the greatest financial losses. Virus losses, which had been the leading cause of loss for seven straight years, fell to second place. If separate categories concerned with the loss of customer and proprietary data are lumped together, however, then that combined category would be the second-worst cause of financial loss. Another significant cause of loss was system penetration by outsiders."
d) "Insider abuse of network access or e-mail (such as trafficking in pornography or pirated software) edged out virus incidents as the most prevalent security problem, with 59 and 52 percent of respondents reporting each respectively."
e) "When asked generally whether they'd suffered a security incident, 46 percent of respondents said yes, down from 53 percent last year and 56 percent the year before."
f) "The percentage of organizations reporting computer intrusions to law enforcement continued upward after reversing a multi-year decline over the past two years, standing now at 29 percent as compared to 25 percent in last year's report."
In December 2006, a disgruntled former client shot a patent attorney in Chicago, alleging he had been cheated in connection with a patent application. This shows that some people do have extremely bad feelings about intellectual property matters and may be motivated to hack the Office's electronic system, in order to seek revenge on the Office for rejection of their trademark applications (source:
Furthermore, the Internet is not a reliable means for communication. It is subject to periodic outages and service interruptions, not only due to malicious hacker attacks but also due to simple technical difficulties at Internet service providers. If we were de facto required to conduct all business with the Trademark Office only by the Internet, and if our Internet service provider had an outage or other technical difficulty, we could be unable to service our clients. Since often there are critical deadlines which must be met in order to preserve our clients' trademark rights, such an unanticipated and uncontrollable technical difficulty could prejudice our clients' rights.
Given the United States' declared war on terrorism, the Internet must be viewed as less reliable than ever. We can expect instances of "cyber-terrorism" which will adversely impact availability of service on the Internet. While the Trademark Office itself may or may not be a specific terrorist target, terrorist attempts to interfere with commerce in the United States by "Denial of Service" attacks targeting the Internet as a whole, would adversely impact on the Trademark Office's ability to provide service, if the primary means of communication with the Office were the Internet. Therefore, if the Office does indeed wish to institute e-filing as a long-term goal, we recommend that the public Internet not be the only means of electronic access. The Office should maintain a modem bank permitting direct dial-in connection to the Office. A direct dial-in connection is more secure than the public Internet. It would permit the Office to trace the origin of malicious calls.
In the case of e-filing, the Office allows exceptions for nonreceipt, if you can prove that you did send the e-filing. There is no sound rationale for taking away a similar privilege for mail filings, and punishing the applicant for nondelivery that was not applicant's fault but only due to delay by the post office. If the applicant can show that the mail was delivered to the post office before the deadline, but the post office or the Office lost it, that is not applicant's fault and the submission should be effective.
Taking away the mailing certificate's effectiveness discriminates against those who are the poorest citizens, since submission by mail is the least expensive means of submission. You do not need to have access to a computer or training in how to use one.
Using the e-filing system without DSL is time consuming and drives up legal fees charged by the hour. The Office seems to assume that everyone has DSL, which is not accurate. Indeed, using a survey of American households, the Government Accountability Office (GAO) found that 30% of surveyed households subscribed to dial-up connections while about 41% did not access the internet from their home (source: www.websiteoptimization.com).
If mandatory filing online were to be implemented, the Trademark Office should at least exempt submissions by mail that include a floppy disc. This would serve the purpose of having electronic filings. There is no great work involved in reading a floppy disc; and submitting a floppy disc would cost applicants only a small amount of money while still giving the Trademark Office the correspondence in a digital format.
The Trademark Office should also revise its electronic procedures to interface with industry-standard office automation programs before forcing applicants (de facto or by rule) to use e-filing. For example, this could be done by having an email address to which one can email an entire ascii-text form in a set format that is both usable by the Office, and easily capable of being prepared by an office-automation program using a "mail-merge"
Robert M. Kunstadt
R. Kunstadt, P.C.
875 Sixth Avenue, Suite 1800
New York, New York 10001
Ph: 212 398-8881
Fax: 212 398-2922