Author: Carl

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A way to make a TEAS form friendlier

Those trademark practitioners whose clients include companies located outside of the US will be familiar with the so-called Section 44e filing basis.  This is the filing basis that honors Article 6quinquies of the Paris Convention.  It permits a would-be applicant in the USPTO to get a free pass (for six years) on having to prove use in commerce in the US.  To qualify for this filing basis, and thus to get the six-year free pass, the applicant must establish that the same applicant earlier obtained a non-US trademark registration for the same mark.  The goods/services identified in the registration are required to “cover” the goods/services identified in the US application.  A further requirement is that the registration is required to come from the place that is the “country of origin” for the applicant.  Finally, the registration needs to be valid and subsisting, and needs to have an expiration date far enough in the future to make it likely the US prosecution would reach is conclusion prior to the expiration date.

The problem is that the TEAS forms for such a US trademark application are actively unfriendly to many applicants, namely those applicants for which the office of registration provides cryptographically protected certificates of registration.  I’ll explain. Continue reading “A way to make a TEAS form friendlier”

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Another defective TEAS form to fix

Readers will recall that I blogged over a year ago about a defect in a TEAS form, namely the Section 71 and 15 form.  This is the form that permits the owner of a US trademark registration that came from a Madrid Protocol application to renew the registration, and at the same time to make the registration incontestable.  The defect that I reported back then was that the TEAS form would sometimes force the filer to pay a “grace period” fee even if no grace fee was actually due.

Another defect in this particular TEAS form has surfaced.  Suppose the registration is between 9 and 10 years old and has not yet been made incontestable.  Then it should make sense to permit the filer to use this Section-71-and-15 form.  But the form won’t work.  The form will refuse to proceed, stating (untruthfully) that the registrant is not permitted to do a Section 71 filing at this time as well as a Section 15 filing.

I reported this problem to the USPTO over a year ago.  It still has not been fixed.

When I reported this defect in the TEAS 71-and-15 form, USPTO suggested a workaround, namely to give up and do the Section 71 filing in one e-filing project and to do the Section 15 filing in another e-filing project.  I guess strictly speaking this does count as a “workaround”, but it is not a very good workaround.  It forces the US practitioner, and the foreign trademark firm, and the client of the foreign trademark firm, to deal with twice as many emails, and twice as many settings and clearings of dockets, and twice as many opportunities for an e-signature to go wrong.  It also forces the participants to deal with a doubled risk of a lost email.

The challenge, I guess, for the developer of the TEAS form, is that the TEAS form needs to check for several conditions to be satisfied:

  • today’s date is within the relevant window (5 to 6 years, or 9 to 10 years, or 19 to 20 years, etc.),
  • the registration is at least 5 years old, and
  • the registration has not already been made “incontestable”.

It strikes me that this coding task should be well within the ability of even a relatively novice programmer.  It seems to me that even if a team of two or three coders were to be required, they could accomplish this coding task in less than one day.  I’d be glad to contribute a day’s worth of pizza and energy drinks to get this coding task completed.

I had hoped that by now USPTO would have gotten this fixed.   But as of now, it is still impossible to use the 71-and-15 TEAS form for any window later than the 5-to-6 window.

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Why it is super-important to get a Power of Attorney filed in absolutely every patent file

Over in the patent practitioner’s listserv (see EFS-Web) a question came up the other day about managing customer numbers.  One list member pointed out that Private PAIR nowadays offers really handy file management functions.  The Private PAIR user can easily update and change customer numbers, for example.  But alert listserv member Jeffrey Wendt reminded us that these really handy file management functions are available only with respect to application files for which the user has filed a Power of Attorney (and has the good luck that the USPTO has recognized the Power of Attorney).  And in fact there are many reasons, not only this PAIR file-management reason, why it is very very important to get a POA filed in every one of your active files.  I will list some of these reasons. Continue reading “Why it is super-important to get a Power of Attorney filed in absolutely every patent file”

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Why a laser printer has three colors of toner instead of two or four colors of toner

One of my favorite listservs is the E-Trademarkscones listserv.  This community of trademark practitioners raises fascinating practice questions.  Here is a question raised by one of the listserv members:

Does anyone have any recommendations on the best printers to use for trademark practice? We obviously need something that prints true colors. So a low-end printer probably won’t do. But we are also looking for high-capacity, non-shared printers that are economical on ink. Anyone have a printer they love?

The part about printing true colors got me thinking about how colors work.  When I took physics class in college the notion of “color” was pretty simple — you would pass a beam of white light through a prism and what would come out was a spectrum of colors.  The spectrum (literally a continuous spectrum) was composed of an infinite number of distinct wavelengths, each of which would be emitted from a prism at a particular distinct exit angle.  But with printers, there are actually only three colors of toner.  How can this be? Continue reading “Why a laser printer has three colors of toner instead of two or four colors of toner”

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Six days remaining to migrate your EFT methods to FM

USPTO rolled out its FM (Financial Manager) system in April of 2016. One of the USPTO’s goals is to force every customer using EFT (electronic funds transfer) for USPTO payments to migrate its EFT method into the FM system. To this end, USPTO has set a last possible date of June 30, 2016 (six days from now) for this task.

If you miss the June 30, 2016 date, USPTO says it will simply shut down your EFT method. To be able to use EFT in future, you will have to create a new EFT arrangement. Setting up an EFT payment method involves an eight-day delay. So you would have a gap of some days or weeks during which you would be unable to use EFT for paying USPTO fees.

Clearly it will save you a lot of trouble if you can get your EFT payment method migrated into the FM system before the remaining six days have passed.

In our office we have two EFTs set up (drawing from two different bank accounts).  We found that the migration of the EFT methods into FM was not very difficult (as compared with the high level of difficulty to migrate our Deposit Account).

The chief challenge is that once the EFT methods got migrated, each of the users within our firm had to go through a complicated and annoying process of constructing extra passwords for use of the EFT methods.  The result is that each user had to print out yet another password and tape it to his or her computer screen.  So much for improving security with these things.

Have you already migrated your EFT payment methods into FM?  How did it go?  Please post a comment below.

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Six days remaining to migrate your Deposit Account to FM

USPTO rolled out its FM (Financial Manager) system in April of 2016. One of the USPTO’s goals is to force every holder of a Deposit Account to migrate its Deposit Account into the FM system. To this end, USPTO has set a last possible date of June 30, 2016 (six days from now) for this task.

If you miss the June 30, 2016 date, USPTO says it will simply shut down your Deposit Account and drop a refund check in the mail to the last known mailing address for the Deposit Account. To be able to use a Deposit Account in future, you will have to create a new Deposit Account and load money into it. Very likely this would take a week or so. So you would have a gap of some days or weeks during which you would be unable to use a Deposit Account for paying USPTO fees. Hopefully the refund check would not get lost in the mail.

Clearly it will save you a lot of trouble if you can get your Deposit Account migrated into the FM system before the remaining six days have passed. To do this, you will need an “authorization code” that you don’t have and that USPTO probably never provided to you. To obtain this crucial “authorization code”, call up the Deposit Account Branch at 571-272-6500. When we called, a few weeks ago, the person who gave us our “authorization code” was a nice person named Rebecca.

I expect this migration process will be particularly difficult or impossible for USPTO customers with complicated Deposit Account arrangements.  For example a large corporation with several outside counsel firms may have a single Deposit Account which it permits the outside firms to use.  Each of the outside counsel firms might phone up Rebecca trying to learn the crucial “authorization code”.  June 30 might come and go without the migration being successfully accomplished.

How did your Deposit Account migration go?  Do you have any tips to share?  Please post a comment.

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Djibouti has joined the PCT

Djibouti has joined the PCT.  This brings the number of members to 150.  You can read about this here.  Djibouti deposited its Instrument of Accession with WIPO on June 23, 2016.  As a consequence, any PCT application filed on or after September 23, 2016 will automatically designate Djibouti.

The two-letter code for Djibouti is DJ.

Seeing the tot150-membersal now at 150 makes me think back to when I filed my first PCT application, in about 1986.  At that point the PCT was about eight years old, and the number of member states was about forty.  This graph shows the number of member states.