USPTO does the right thing on trademark fees relating to the outage

On December 24 I blogged about things the USPTO needs to do to remediate the problems that flowed from the massive USPTO system outage December 22-27.  I wrote:

The TEAS-Plus system imposes a $50 per trademark class penalty on any filer of a “Plus” or “RF” (reduced fee) application who files a response by means other than e-filing.  USPTO needs to not impose that penalty on those who responded to a Plus or RF office action by means other than e-filing during this system crash time.

I am delighted to be able to report that now, December 31, the USPTO has addressed this problem.  

First, let me thank alert listserv member Barbara Friedman who pointed out this problem in the trademark practitioner’s listserv on December 23.

USPTO has announced the following:

Pursuant to 37 C.F.R. § 2.148, the Director waives the requirements under 37 C.F.R. §2.22 (b)(1)(i)-(viii) [A] and 2.23(b)(1)(i)-(viii) [B] in applications based on TEAS Plus or TEAS RF to submit the identified communications “through TEAS” for the period of December 22, 2015 through December 27, 2015. Communications submitted via alternative filing methods during that period will not incur the additional processing fee under §§ 2.22(c) or 2.23(c) of $50.00 per class, as set forth in § 2.6(a)(1)(v).

The Director also waives the requirement under 37 C.F.R. § 2.6(a)(5)(i) [C] regarding applications for renewal submitted via alternative filing methods (“on paper”) between December 22, 2015 and December 27, 2015. Further, the Director waives the requirement of 37 C.F.R. §2.6(a)(5)(ii) [C] relating to filings for renewal as to the requirement for such filings to be “through TEAS.” Thus, the applicable fee for all applications for renewal of a registration filed between December 22, 2015 and December 27, 2015 is $300.

(Reference letters inserted.)

Let’s parse out the rule waivers.

A.  37 C.F.R. § 2.22 (b)(1)(i)-(viii).  This is the $50 per class penalty for failing to e-file follow-on papers in a Plus application.  So if in desperation someone used paper filing or fax filing for a follow-on paper in a Plus case during the period of December 22-27, USPTO will not impose the penalty.  As a reminder the follow-on tasks that would normally trigger the penalty are:

  • Responses to Office actions (except notices of appeal under section 20 of the Trademark Act)
  • Requests to change the correspondence address and owner’s address
  • Appointments and/or revocations of power of attorney
  • Appointments and/or revocations of domestic representative
  • Voluntary amendments
  • Amendments to allege use under section 1(c) of the Act or statements of use under section 1(d) of the Act
  • Requests for extensions of time to file a statement of use under section 1(d) of the Act
  • Requests to delete a section 1(b) basis.

B.  37 C.F.R. § 2.23 (b)(1)(i)-(viii).  This is the $50 per class penalty for failing to e-file follow-on papers in a TEAS RF application.  So if in desperation someone used paper filing or fax filing for a follow-on paper in an RF case during the period of December 22-27, USPTO will not impose the penalty.

C and D.  37 C.F.R. § 2.6(a)(5).  This is the $100 per class penalty for filing a ten-year trademark renewal on paper rather than electronically.  I blogged about this penalty when it was first announced.  Normally if you do a ten-year trademark renewal electronically it costs $300 per class, and if you do it on paper USPTO charges an extra $100 per class, bringing the total government fee up to $400 per class.  But for the period of December 22-27, if you did the renewal on paper you will not get dinged for the $100 penalty.

What about the practitioner who dutifully paid the $50 or $100 penalty when paper- or fax-filing during the time of the outage so as to avoid being dinged for it later?  I imagine such a practitioner could get a refund of the penalty.

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