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V. Publication and Issue
. – Monitor existing applications for publication as well as applications published for opposition to ensure third party marks are not likely to infringe clients trademarks
VI. Policing and Enforcement
. Ensure that trademarks are used properly in advertising, promotion, and sales materials. Monitor collateral materials for correct usage.
. Prepare and update trademark bulletins and guidelines and post internally and externally on corporate websites
. Draft cease and desist letters to third parties including publications to notify of incorrect usage of trademarks
. Provide trademark guidelines to International Agents for reference and policing activities
. Internal policing – Monitor internal documents for correct usage of trademarks - Advertising copy, packaging, labels and other collateral materials
. External policing- Monitor external documents and materials for correct usage of trademarks
. Review USPTO Official Gazette
VII. Post-Registration Maintenance
. Prepare all post registration documents to maintain trademark registrations. Examples of such documents include:
. Section 8 Declaration of Use
. Renewals
. Ownership Notices published in local newspapers
. Proof of Use – Marks vulnerable to cancellation on the basis of non-use
VIII. Post- Registration - Must inform client of:
. International markings - Requirements
. Provide list of markings by country
. Recording Registered Trademarks with Customs
. Requirements to Register
. Requirements to Renew
. Terms of Use After Registration
. Provide information on marks becoming vulnerable to cancellation on the basis of Non-use – by country
. Notice to Clients
. Counterfeiting
. Customs
. Record trademarks with Customs
. Renew recordation with Customs
IX. Watch Services
. Review watches notices daily
. Marks watched include:
. House marks
. Logo marks
. Secondary marks
X. Docketing
. Responsible for updating and maintaining trademark database which contains statutory due dates, actions due and country law updates
. Responsible for setting level of use for department users
. Information contained in trademark docketing system include:
. Pending applications
. Existing registrations
. Abandoned applications
. Cancelled or lapsed registrations
. Ownership Information – Current and prior owners
. Images of logo, designs and stylized marks
. Oppositions, infringement and cancellations
. Priority agreements, co-existence agreements
. Letters of consents
ELECTRONIC FILING WITH USPTO
By Deborah Hampton, Candida Hinton, Grace Jennings, and Ellen Lockwood, CLAS
International Trademark Association
Editor’s Note: The authors of this article presented the Intellectual Property educational track during NALA’s 28th Annual Convention July 9–11 in San Antonio. Their further collaboration, with the support of INTA, to prepare this article is appreciated.
The ability to file or submit documents electronically or “online” to the United States Patent & Trademark Office (USPTO) is a fairly recent development in trademark prosecution. In the past, trademark owners filed applications manually with the understanding that the date of the application would either be the date of receipt by USPTO (acknowledged by return receipt of a pre-addressed postcard), or the date of deposit by express mail with the U. S. Postal Service.
Before electronic filing, the process was complex and fraught with details—and attendant possibilities for human error. Paralegals are typically responsible for drafting applications and cover letters, and preparing the drawing page and specimens if needed. The person responsible for signing the application is not usually at the same location as the law department. In the case of a law firm, clients are in other locations. The application is forwarded to the appropriate person(s) for review and signature, then returned to the paralegal for further processing.
Time is often of the essence, and every minute counts. Electronic filing has simplified the process and signficantly reduced chances of errors and the time required to file applications. The beauty of electronic filing is that applications can be filed in any place, as long as there is access to the Internet. If an emergency arises, it can be done instanteously.
ADVANTAGES
The USPTO prefers applicants to file applications for registration of a mark electronically, using the Trademark Electronic Application System (TEAS, available at www.uspto.gov). The USPTO website lists many advantages of electronic filing compared to filing on paper. Some of these advantages include:
• The ability to file 24 hours a day, seven days a week. This makes it possible to receive a filing date on days that USPTO is officially closed, and extends the time for filing on any given day until midnight Eastern Standard Time. Trademark applications filed by express mail no longer receive the date of deposit with the Post Office as a filing date, whereas documents filed electronically receive the date that USPTO receives the transmission.
• Virtually instantaneous filing receipts and serial numbers.
• Flexibility in payment options—either credit card, deposit account, Electronic Funds Transfer (EFT), or E-Check
• Significant savings on postage and fax charges and/or courier delivery costs, because electronic applications are created, reviewed, and filed electronically using the Internet.
• More accurate filing receipt information, because it is transferred directly from the database containing the information entered by the applicant and does not need to be manually entered again at USPTO.
• More efficient review and processing of applications, because they are in a standard format recommended by USPTO, which allows faster review of applications by an examining attorney or paralegal.
• Automatic confirmation in TRAM/TARR of receipt of all submissions, helping to avoid abandonment
TEAS & PrinTEAS
To help meet ever-increasing workloads at USPTO, the office strongly encourages electronic filing. The downloadable paper forms formerly available on the USPTO website have been replaced with links to TEAS, where applicants can file directly online, or access PrinTEAS for completing the application online, then printing it out and mailing it.
While a PrinTEAS filing is on paper, it is in a scannable format preferred by USPTO over a traditional paper form. The PrinTEAS form allows for faster processing of the application and decreases the amount of paperwork to be prepared by the legal assistant.
For a stylized or design mark, or for submission of a specimen, TEAS requires attachment of a JPEG image file. For a mark in typed format, the mark can simply be entered via computer keyboard.
With PrinTEAS, on the other hand, applicants can attach an image file in the “Mark Information” section to create a drawing page. This is not required, however, and applicants can check a box indicating that they do not have an image file, and attach the image manually. For a mark in typed format, it can be entered directly via computer keyboard.
If applicants are unable to submit an application directly online, PrinTEAS still provides advantages to both the applicant and USPTO. It offers online help with each data entry field by simply clicking on the field name. Also, PrinTEAS, as with TEAS, features a validation function which provides error messages if mandatory fields have not been completed (and warning messages if other expected, although not mandatory, fields have not been completed).
Correspondence with USPTO
The latest version of TEAS features a checkbox near the applicant’s e-mail address that signals USPTO to correspond with the applicant via e-mail. Consequently, office actions will be sent via e-mail rather than regular mail. Certain items (e.g., a “Notice of Allowance”) will still be mailed via regular mail.
If the box is not checked, then all correspondence will be routed through the U.S. Postal Service by regular mail. It is highly recommended that law firms or corporations set up “group” e-mail addresses for corresponding with USPTO. Applicants can add anyone, such as the paralegal, responsible attorney, docketing clerk, etc., to the group address who needs to be copied. Thus, when someone leaves the firm or corporation, his or her name can simply be deleted from the group, and new people can be added, eliminating the need to constantly change the address with USPTO.
Practitioners’ Acceptance
Although USPTO was first to implement the electronic filing system, many international trademark offices are adopting electronic filing as a 21st Century intellectual property business model. Not surprisingly, practitioners have had varied responses to TEAS and the concept of electronic filing.
Some prefer the old-fashioned pen and paper filings as a proven method, while others appreciate the uniformity of applications and the convenience of obtaining a filing receipt within 90 seconds of filing an application or other TEAS document. At Agere, the TEAS method of filing trademark applications is preferred.
It is not time consuming, and the validation function prevents errors with the application. The system allows immediate updating of the firm’s trademark docketing system, populating all of the necessary fields, and most importantly, the serial number and filing date. In addition to trademark applications, 90 percent of the documents relating to applications and registrations required by the USPTO are filed electronically.”
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