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Tech Requirements |
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Certain technological capabilities are needed to file documents electronically.
The correct Web browser settings, scanning equipment, and a method of
electronic payment are requisite. Images of design marks, composite marks
composed of a word and design, and specimens of use must be converted into JPEG
files to be attached to TEAS documents. Lack of the equipment necessary to
capture images electronically may preclude firms or companies with limited
technology from using TEAS.
Overall, the flexibility of moving between manual and electronic filing seems
to be appreciated by those with heavy trademark filing deadlines and varied
technological capabilities. An outline of TEAS technical requirements, TEAS
forms, and an online “TEAS Wizard” are available at the USPTO Web site. The
TEAS Wizard will assist users during the application process by prompting them
to provide relevant information. TEAS will not allow an application to be
accepted without providing the required information. |
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Application Requirements |
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Whether filing on paper, with TEAS, or PrinTEAS, applicants must meet statutory
trademark application requirements in order for USPTO to begin the examination
process Minimum requirements for receiving a filing date for an application are
as follows: |
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1. Name of the applicant
2. Name and address for correspondence
3. Clear drawing of the mark
4. Listing of the goods or services
5. Filing fee for at least one class of goods or services |
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Applications may be filed on an “Intent-to-Use” basis or on a “Use” basis when
the marks have been used in interstate commerce prior to submitting the
application. While not required, information concerning the attorney(s) of
record may also be entered into the system when filing the application. If
applicants wish to include additional information concerning the mark (i.e.,
prior registrations, disclaimers, or a description of the mark), TEAS provides
a radio-button for “Additional Statement” with a list of options.
Each trademark application will be substantively examined by a USPTO Examining
Attorney, and is subject to public review during an opposition phase. Depending
upon whether the application was filed on an intent-to-use basis, or an actual
use in commerce basis, the applicant must submit proof of actual use of the
mark in interstate commerce by filing trademark samples known as “specimens of
use” for examination and approval prior to receiving federal registration of
the mark.
Applicants may also electronically file specimens along with a statement of
use, and there is a help wizard to guide users through the form. The filing fee
is a processing fee that will not be refunded even if registration of the mark
is denied. It is prudent to conduct a search and clear the mark prior to filing
an application to prevent losing the filing fee and wasting an application. |
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Signature Options |
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The USPTO does not require signed applications at the time of an initial
filing. However, if the original application is not signed, applicants are
required to provide a completed application at a later date. Authorized persons
to sign on behalf of the applicant may be: |
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• A person with legal authority to bind the applicant
• A person with firsthand knowledge of the facts and actual or implied
authority to act on behalf of the applicant
• An attorney who has actual or implied written or verbal power of attorney
from the applicant |
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Signature options with TEAS include an electronic signature that is a name or
code of the applicant’s choice, between two slashes (e.g., /jane doe/ or
/xyz123/). The applicant’s title and position are also required in the
signature block. Pen and ink signatures may be scanned as JPEG files that are
then attached to the application. |
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Technical Limitations & Requirements |
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Each TEAS form has a session limit of 60 minutes. If the form is not completed
within this time period, the form will not be validated and the entire process
must begin again. It is a good practice to complete, validate, and download
forms for modification prior to logging on in order to prevent loss of time and
work product. Images must be in JPEG format and the image files cannot exceed
two megabytes per attachment. Animated GIF files are not accepted. |
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Other Documents |
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In addition to trademark applications, pre-registration forms that can be filed
electronically are the Statement of Use/Amendment to Allege Use, Request for
Extension of Time to File the Statement of Use, and a Response To an Office
Action. Post-registration forms that can be filed are the Combined Declaration
of Use & Incontestability under Sections 8 & 15, Declaration of Use of
a Mark Under Section 8, Combined Declaration of Use in Commerce/Application for
Renewal of Registration of Mark under Sections 8 & 9, and a Declaration of
Incontestability under Section 15. As with the application form, there are help
and validation functions to guide applicants through the TEAS process.
Change of Correspondence and Assignment forms have recently been added to the
TEAS system. The ability to file a change of correspondence electronically can
be helpful if a group moves to a new facility. Before electronic filing, it
would take a day or so to manually prepare the forms, cover letters and
postcards to send to the USPTO. With TEAS, it takes only a couple of hours to
record the changes electronically. Confirmations can be printed out for paper
filing systems. |
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Correcting Mistakes |
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As with any system, mistakes can occur when filing electronically. Fortunately,
USPTO will accept an electronically filed preliminary amendment stating the
proposed correction. (at http://eteas.uspto.gov/V2.0/pa200/WIZARD.htm).
Preliminary amendments cannot be filed until at least 15 days after initial
filing of the application. Prior to that time, the serial number will not
appear in the USPTO database (even though the number was assigned at the time
of filing). |
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For other types of mistakes, such as citing the wrong trademark, there is
nothing that can be done. Since the filing fee is a processing fee, it will not
be refunded. The only alternative is to file a new application. Many who file
electronically, wisely print out the form and review it prior to submission.
Reading a printed form, versus staring at the screen, can make the final review
process much easier and is a smart precaution. |
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Who Actually Does the Work? |
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Responsibility for electronic filing falls squarely on many trademark
paralegals. Often they are required to complete either the PrinTEAS or TEAS
form, and print out or e-mail it to the attorney for review prior to submission
to USPTO. If legal assistants are given authority to file the application after
review of all pertinent information, then they are ultimately responsible for
any mistakes or errors. |
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That is why it is important to print a draft of the application prior to
submission. The TEAS system also allows applicants to download the form onto
their computers, thus removing the restraint of the 60-minute timing-out of the
session. Another benefit of downloading the application form is that applicants
can pre-populate certain fields and then update the form as needed. This is
particularly useful for paralegals who work in corporations, essentially
working for only one client. It minimizes the margin for error and reduces the
time needed to prepare and file the applications. |
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Madrid Protocol Applications |
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In November 2003, the Madrid Protocol Implementation Act of 2002 (MPIA) became
effective. This act enables the owner of a U.S. application or registration to
seek protection of its mark in any of the 57 countries party to the Madrid
Protocol by submitting a single international application through USPTO to the
World Intellectual Property Organization. |
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Similarly, an international owner may request extension of the protection of
their mark to the United States. The USPTO has proposed that Madrid Protocol
filing be submitted through the TEAS system. If implemented, U.S. owners will
have no choice but to use electronic filing if they want to benefit from the
Madrid Protocol. |
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Electronic Filing Basics |
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• Prepare a checklist for the application basics |
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• Secure JPEG images of the mark or specimens as needed |
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• Select either an electronic or pen and ink signature method. |
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• Select a payment method and have deposit account, electronic funds account,
or credit card information available |
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• Refer to the TEAS Wizard for assistance in completing the application |
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• Confirmation of electronic filing is sent in a message titled
“SUCCESS!” Contact USPTO if such notification is not received. |
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• Immediately record or notify docketing of electronic filing
details in order to adequately monitor the status and deadlines associated with
the application |
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