The TEAS system offers an online form called “Combined declaration of use & incontestability under Sections 71 & 15“. It turns out the form is defective — it sometimes forces the user to pay a grace period fee even if the would-be filing is not within the grace period. There are two possible workarounds.
First a bit of background. US law calls for the USPTO to cancel a trademark registration unless its owner files a Statement of Use at six years after registration, and at each ten-year anniversary of registration. The filing requires a $100 fee which covers the valuable time of a post-registration paralegal at the USPTO who reviews the Statement of Use. For an ordinary domestic trademark registration this SOU is called a “Section 8” filing, and for a Madrid Protocol trademark registration this SOU is called a “Section 71” filing. (I review the Madrid maintenance filings in this blog posting.)
There is also a filing called a “Section 15” filing, by which a trademark registration may be made “incontestable”. (I review incontestability in this blog posting.)
For many years the USPTO has made it possible for the owner of an ordinary US trademark registration to do a combined Section 8 and Section 15 filing, in a single TEAS form. This is very convenient for the trademark owner. The professional fee charged by a practitioner to do a Section 8 and 15 filing might be no bigger than the professional fee to do a Section 8 filing by itself.
A few years ago the USPTO made it possible for the owner of a Madrid Protocol trademark registration to do the same thing. A single TEAS form permits the owner to do a combined Section 71 and 15 filing.
The combined 8 and 15 form has only a single window of time during which it might save money for a trademark owner, and that is during the 5-to-6-year window after the registration date. After that window has closed, there will never again be a time when that trademark owner can make good use of the combined 8 and 15 form. After that window has closed, the trademark owner seeking incontestability would have to file a standalone Section 15 filing.
The combined 71 and 15 form, interestingly, has many windows of time during which it might save money for a trademark owner. Yes it can save money when filed during the 5-to-6-year window. But it can also save money when filed during the 9-to-10-year window, and so on for later decades.
Which brings us to the point of this blog post. It turns out that the combined 71 and 15 form in the TEAS system is defective. It sometimes forces the filer to pay a grace period fee even if the filing is not within the grace period.
There are two workarounds for this problem.
A first workaround is to file the Section 71 TEAS form by itself. And then as a separate matter to file the Section 15 TEAS form by itself.
A second workaround is to go ahead and file the combined Section 71 and 15 TEAS form, paying the unnecessary grace period fee. And then in the miscellaneous statement field, type in a request that USPTO refund the grace period fee.
One drawback to the first workaround is that it forces a client to negotiate and e-sign not one but two TEAS forms. A related drawback is that the practitioner will have to spend all of the time involved to carry out two TEAS filings, for a client that was promised that the combined 71-and-15 filing would have a professional fee no greater than the professional fee for a standalone Section 71 filing.
A drawback to the second workaround is having to docket to check for USPTO refunding the wrongly collected grace period fee, and perhaps having to badger the USPTO about it repeatedly until the USPTO got around to refunding that fee.
A source at the USPTO says it is planned to correct this defect in the 71-and-15 TEAS form in a July 2015 release of TEAS.