Why does the USPTO not “auto-acknowledge” Section 15 trademark declarations? Why does it take the USPTO an average of 37 days to do something that should take around ten seconds to do?
Readers will recall my June 9, 2015 blog article explaining what “incontestability” is for a US trademark registration. Briefly, the owner of a US trademark registration may gain “incontestable” status by filing what is called a “Section 15” declaration with the USPTO. The point of a Section 15 declaration is that the owner represents to the USPTO that the mark has been in continuous use in commerce for a period of five years after the date of registration.
When a trademark owner files a Section 15 declaration at the USPTO, what happens next? What happens next (I guess) is that some human being at the USPTO carries out a review of the Section 15 declaration to determine whether the USPTO should “acknowledge” the Section 15 declaration, or whether the USPTO should mail an Office Action bouncing the Section 15 declaration. (If the USPTO bounces the Section 15 declaration, the owner is given an opportunity to cure the defect.)
The point of this blog article is to observe that it takes the USPTO an average of 37 days to carry out this determination, and to observe that in each case it should have taken about ten seconds.
To appreciate fully how odd this 37-day period is, consider what exactly it is that the USPTO does when it carries out its review of a Section 15 paper.
Section 15 of the Lanham Act (together with the relevant Rules) says that a Section 15 declaration must be filed only after five years have passed since the registration was granted, and says that the Section 15 declaration must contain “magic words”, namely a representation by the owner that the mark has been in continuous use in commerce for a period of five years. The “magic words” must also contain the usual “declaration” language that the signer is making the statement about the five years under penalty of perjury.
A person who is just hearing about this Section 15 process for the first time might be forgiven for thinking that the reason it takes 37 days for USPTO to do its work is that maybe USPTO carries out some independent investigation of whether the mark has indeed been in use for the stated time period. Or maybe the USPTO carries out some independent investigation of whether there have been some gaps in the use so that it would not qualify as “continuous” for the stated time period. Or maybe the USPTO carries out some difficult calculation to work out whether the filing date of the Section 15 declaration is or is not a full five years after the date upon which the USPTO granted the trademark registration.
The answer to almost all of these questions is “no”. The USPTO goes to some lengths to make clear that the USPTO does almost nothing when it reviews a Section 15 declaration. Section 1605 of the Trademark Manual of Examining Procedure, for example, takes pains to point out that:
The USPTO does not “accept” §15 affidavits or declarations.
Instead, the TMEP says, the USPTO does only the following:
- looks to see whether the Section 15 declaration was signed,
- looks to see whether the Section 15 declaration was filed at an appropriate time,
- looks to see whether the Section 15 “magic words” are properly set forth, and
- looks to see whether the relevant government fee was paid.
After the USPTO has carried out these four steps, the USPTO mails out an “acknowledgment” of the Section 15 declaration. That’s all you get, a mere “acknowledgment”. Not an “acceptance”.
How long does it take for the USPTO to carry out these four steps? Here are seven recent actual cases from our docket:
|Section 15 Filed||Acknowledged||Delay, days|
|October 12, 2017||November 10, 2017||29|
|February 16, 2017||May 18, 2017||91|
|November 30, 2016||January 14, 2017||45|
|November 30, 2016||January 14, 2017||45|
|September 21, 2016||October 11, 2016||20|
|April 28, 2016||April 30, 2016||2|
|July 21, 2015||August 20, 2015||30|
What I should point out is that in all seven of these cases, the Section 15 declaration was e-filed using USPTO’s own TEAS system. Which brings us to my main point. Why should the USPTO do anything other than auto-granting such Section 15 acknowledgments?
Signed? The TEAS system actively checks to see whether the Section 15 declaration was signed. If it was not signed, the TEAS system will bounce the filing and will not permit the filer to click “submit”.
At an appropriate time? The TEAS system actively checks to see whether the Section 15 declaration is being filed at an appropriate time. If, for example, the registration is less than five years old, the TEAS system will not even permit the filer to proceed with the filing process. As another example if the registration has been canceled, the TEAS system will likewise bounce the filing.
Contains the required “magic words”? The TEAS system forces the filer to recite the required “magic words”. It is impossible to file a Section 15 declaration in TEAS without reciting all of the required “magic words”.
Fee paid? The TEAS system will not permit the filer to get away with failing to pay the required government fee. The TEAS system counts the number of classes, multiplies this by the fee amount (presently, $200 per class), and requires payment of the full amount at the time of filing. It is impossible to finish the TEAS filing of a Section 15 declaration without paying the fee.
Given that TEAS checks all of these things, why does it take an average of 37 days for the USPTO to “acknowledge” a Section 15 declaration?
Part of the answer is, of course, tied to the fact that it is physically possible for a trademark owner to file a Section 15 declaration on paper. These days nobody actually does this, but it is still physically possible to do this. It will then be appreciated that a trademark owner choosing to do a paper filing of a Section 15 declaration could mess up any of the four requirements. For example the trademark owner could forget to sign the document. The trademark owner could file the paper-based Section 15 declaration too soon (for example a mere four years after the grant of registration) or too late (after the registration has been canceled). The trademark owner could omit one or more of the “magic words” that are required to appear in the Section 15 declaration. Finally, the trademark owner could fail to pay the required government fee (for example only paying for one class in a two-class registration, or paying an outdated and insufficient fee amount). One could well imagine that it would take the USPTO some days or weeks to carry out a review of a paper-filed Section 15 declaration.
But these days, it is vanishingly rare that anybody files a Section 15 declaration by any means other than TEAS. Instead, in well over 99% of cases, the trademark owner files the Section 15 declaration through TEAS. Meaning that the risk that the filing is missing the required “magic words” is nonexistent. Meaning that the risk that the filer failed to hand in all of the money is nonexistent. Meaning that the risk that the filing is missing the virgule signature is nonexistent. Meaning that the risk that the filing was done prematurely (before five years has passed) is nonexistent. Meaning that the risk that the filing was done too late (after the registration has been canceled) is nonexistent. TEAS checks all of these things.
The USPTO has shown its ability to “auto-grant” plenty of things. For example the patent applicant who seeks to withdraw a patent application from issue can use EFS-Web to file a petition to withdraw from issue, and the petition is “auto-granted”. The patent applicant who seeks to file a Terminal Disclaimer can use EFS-Web and the Terminal Disclaimer will, in many situations, be “auto-granted”. The patent practitioner seeking to withdraw from representation in a patent application can use EFS-Web to file a petition to withdraw from representation, and EFS-Web will “auto-grant” the petition. On the trademark side, an applicant who files a trademark application at the USPTO is “auto-granted” the trademark application number.
It seems to me that USPTO should not need to take an average of 37 days to carry out the review of a Section 15 declaration, at least not for filings carried out through TEAS. The process of “acknowledging” a Section 15 declaration in TEAS should be instant and automatic. This is the sort of thing that computers are supposed to be good at.
I suppose the explanation for this oddity, that USPTO carries out such Section 15 reviews manually even now in 2017, is rather simple. Before the Internet happened, all Section 15 submissions were, by definition, on paper. Back in those days, there was no choice but for USPTO to give to some human being the tedious work of checking to see whether the Section 15 filing was premature, checking to see whether any “magic words” were missing, checking to see whether the correct fee had been paid, and checking to see whether the filer had forgotten to sign the document.
Then the Internet happened, and by 2017 the practical situation is that well over 99% of Section 15 filings are through TEAS. Meaning that by the time the Section 15 filing has reached the USPTO, the TEAS computer has already checked all of these things. But still the legacy workflow remains. Somewhere it is written that every Section 15 filing must be routed to a human being, just as it was before the Internet happened. Somewhere it is written that the human being must complete some checklist and sign it, or something tedious like that.
Which brings us to BPRs. Business Process Reorganizations. Any time you have some process that recurs lots of times at a big place like the USPTO, there is the chance to do a BPR. The BPR, if successful, can save money, or can get things done faster, or can reduce error rates. But the BPR only makes sense to do if the process happens lots of times per year. Even the simplest BPR at the USPTO probably incurs internal costs to the USPTO of many tens of thousands of dollars. The problem, I’d guess, is that Section 15 filings are actually rather infrequent when compared with other things that happen quite often, such as the filing of a new trademark application or the filing of a response to an Office Action. This probably explains why no BPR has been done to bring about an auto-grant of an acknowledgment of a Section 15 filing.