Trademark Law Updates | New Statutes, Regulations and Rules
February 29, 2012
USPTO Issues TEAS 4.9 Release
TEAS 4.9 Release
USPTO No. ____, 11/10/2011
The following highlights most of the changes to be placed into production in TEAS 4.9.
1. Applicants will have the opportunity to list multiple email addresses for receipt of electronic communications from the USPTO. One email address will still be the primary email and any other email addresses designated by an applicant will be deemed “courtesy emails.” That means that if an email to the primary email address bounces back to the USPTO as undeliverable, the USPTO will again attempt email delivery, if it can be determined why the bounceback occurred (e.g., a clear typographical error in the address as .cmo rather than .com); otherwise, a paper copy will be mailed via the United States Postal Service; however, if an email to any other address is undeliverable, no additional effort of a second email or paper copy will be made. The only caveat is that the USPTO has no mechanism to determine if email has been delivered to a spam folder. I.e., from that perspective, delivery to a spam folder IS considered “delivery,” and the USPTO will not receive any sort of undeliverable bounceback and will not make any other attempt at a second delivery. Therefore, it is important to ensure that all steps are taken to ensure delivery of USPTO emails, as per this TEAS FAQ posting. NOTE: “Secondary” addresses for existing applications/registrations may be added through the TEAS “Change of Correspondence Address” form.
2. For new applications only, sound/motion/multimedia files (.wav, .wmv, .wma, .mp3, .mpg, or .avi formats, not exceeding 5 MB in size for audio files and 30 MB for video files) may be filed directly as part of the form, rather than using the separate “workaround” feature of emailing the file to TEAS@uspto.gov. At a later point, it is anticipated that this functionality will be expanded to all forms. If necessary, consult the TEAS FAQ for details of the workaround feature.
3. Saved portable forms will retain any attachments, so that it will no longer be necessary to re-attach any files originally appearing when the form was first completed.
4. Section 71 “global” form will be replaced with a “regular” (field structured) form, and a new combined Section 71 and 15 will be introduced. I.e., the new forms will mirror the existing Section 8 and Section 8 & 15 forms, with language changes appropriate for a Section 71 filing.
5. The Response to Suspension Inquiry/Letter of Suspension form will be enhanced to merge the existing form with the Response to Office (ROA) action form. I.e., after checking the box to indicate what issue is to be addressed in the “suspension” portion of the form, the same form wizard questions that appear in the ROA form will be displayed, to allow for direct entry of the information in structured fields (rather than simply the free-form text fields of the current suspension form).
6. ROA form enhanced so that the “horizontal” display occasionally encountered (where all of the text of the argument, for example, runs in a horizontal line, making it extremely difficult to read) has been eliminated.
7. Vatican City added to the pulldown menu.
8. Global forms enhanced to allow entry of Microsoft characters.
9. State/country codes should not appear within INPUT TABLE and TEXT FORM stylesheets; i.e., the actual literal should always appear, rather than any code therefore.
10. For the ROA form, any information entered related to a Section 44(e) claim should appear in the TEXT FORM, not just the INPUT TABLE.
11. Revocation/appointment form enhanced to allow the addition of other attorneys.
12. Letter of Protest form updated to include the language found within the TMEP 8th Edition.
13. Warning added within initial application about the importance of authorizing email communication.
14. For all forms having a separate “Miscellaneous” section, this page will be moved to appear immediately before the fee information page.
15. More statuses added to front-end edit for ROA form to ensure that use of that form is not being improperly blocked.
16. Links for Trademark Information Network “how-to” videos incorporated into appropriate sections of the forms (e.g., at applicant section, drawing section, goods/services section).
17. “WARNING” language added to highlight when this question should be answered as “Yes.”
1. Is a newly appearing attorney filing this form?
O Yes O No
WARNING: Answer YES to this question only if one of the three requirements set forth in the underlying help text for “newly appearing attorney” has been satisfied. Failure to satisfy one of the three requirements may result in a later determination that this submission is incomplete and/or not in compliance with the minimum filing requirements.
18. New “NOTE” added in form wizard question of the ROA form, related to “Additional Statements”:
NOTE: ALL of the below will display within the “Additional Statement(s)” section of the form, even when only one is appropriate and should be selected.
19. Two new warnings related to email addresses and authorization:
a. Email address but no authorization: Warning: Although you have provided an e-mail address, you have not checked the box to authorize the USPTO to communicate with the applicant. This is acceptable if you wish the address to be used forinformal communications only; otherwise, for official correspondence purposes, the authorization box must be checked.
b. Neither email address nor authorization: Warning: You have neither entered an e-mail address nor checked the box permitting e-mail communication. To receive official e-mail communications from the USPTO, you must enter an e-mail address and check the box. If you only wish to receive informal communications from an examining attorney via e-mail, you should only enter an e-mail address.
20. Functionality added to allow entry of email addresses directly in forms subsequent to the initial application form, rather than having to go to the separate “Change of Correspondence Address” form.
21. All forms subsequent to the initial application form will show the attorney of record information, when appropriate.
22. Because of misuse, the “Request for Reinstatement” form will add an error message for when the mark is already registered, directing the user to the proper petition form.
23. Allegation of Use form updated to fix problems related to the upload of new mark images.
24. Revocation/Appointment of attorney form enhanced to ensure proper detection of the number of owners and the related display of the correct number of corresponding signature blocks.
25. Revocation/Appointment of attorney form enhanced to allow the entry of information for “other appointed attorneys.”
26. All forms subsequent to the initial application form enhanced so that multiple owner information populates correctly and, where appropriate, users may add and delete owners.
27. Post Registration forms enhanced to ensure that “other appointed attorney” information displays properly.
28. New wizard question added to allow for multiple signatories, even though only one owner exists (e.g., some foreign entities require two signatories, even though it is a single owner).
29. New field added in signature section for collecting a phone number, so that the specific person signing may be reached directly more easily.
30. Current blocking edit removed and warning put in its place to allow, if appropriate, the filing of a second post-registration form of the same type. The warning will simply highlight that the USPTO has already received a submission of this type for this registration number (in case this filing attempt is an inadvertent duplicate), but otherwise registrant may continue.
31. Netherland Antilles removed from the pulldown boxes and replaced with Curacao, Sint Maarten (Saint Martin), and BES Islands.
32. Edit for the “Petition to Revive with Request to Delete Section 1(b) Basis or to Delete ITU Goods/Services after NOA” form updated to allow the filing of the form before the actual issuance of the abandonment notice.
33. Voluntary amendment form enhanced to ensure that “dba” information is processed correctly.
34. Front end edits enhanced for the “Response to Petition to Revive Deficiency Letter” form.
35. Font size increased for where the serial/registration number is to be entered on the global forms.
36. Bug fixed in the voluntary amendment form, to ensure that listed state remains the same when changing other information within the applicant information section.
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