Wednesday, April 09, 2008

PTO Proposes Rule Changes Regarding Express Mail and Certificate of Mailing Filings

In a Notice published in the Federal Register on February 29, 2008 (here), the PTO proposes to amend the Trademark Rules of Practice to provide that the procedures for filing trademark correspondence by Express Mail or under a certificate of mailing or transmission do not apply to certain specified documents for which an electronic form is available in the Trademark Electronic Application System (‘‘TEAS’’).


Changes in Rules Regarding Filing Trademark Correspondence by Express Mail or Under a Certificate of Mailing or Transmission


SUMMARY: The United States Patent and Trademark Office (‘‘Office’’) proposes to amend the Trademark Rules of Practice to provide that the procedures for filing trademark correspondence by Express Mail or under a certificate of mailing or transmission do not apply to certain specified documents for which an electronic form is available in the Trademark Electronic Application System (‘‘TEAS’’). The purpose of the rule change is to promote electronic filing, increase efficiency, and improve the quality and integrity of critical data in the Office’s automated systems.

Comments on the proposed rules must be received by April 29, 2008 to ensure consideration. Reportedly, the USPTO subcommittee of INTA is preparing comments on the proposal and will ask the PTO to reconsider its position on office action responses and other lengthy documents.

TTABlog comment: A number of practitioners have complained about the proposed rule changes on the INTA list-serv. They point out a number of situations in which the electronic forms don't work, and in which paper filing is necessary.

It seems to me that most practitioners already have an incentive to use the electronic forms: ease of use and immediate acknowledgment of the filing. Are there a substantial number of practitioners who simply refuse to use the electronic forms and must be prodded to do so by this Rule change? Is that number signficant enough to justify the added difficulty and inconvenience that will be visited on those who need to file on paper?

Text Copyright John L. Welch 2008.

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