Should USPTO ban non-electronic trademark filings?

When I was first in practice, many years ago, the only way to file a trademark application was on paper.  Another way to say this is that the rate of e-filing was zero percent.

The US Trademark Office introduced trademark e-filing on March 20, 2000.  The first-ever electronic US trademark application was filed at 10:30 AM on that day.  Later that day, I launched the E-Trademarks listserv, an online community that continues to be very active now in 2018.

I did not have an opportunity to e-file a US trademark application for the first time until ten days later, on March 30, 2000.

Interestingly, in those early days the way that an electronically filed US trademark application got examined was that somebody at the Trademark Office printed it out on paper, and then the printout was injected into the workflow as if it had been paper-filed.  It took almost a year for the Trademark Office to implement electronic workflow for the Examining Attorneys.

By now in 2018 the rate of e-filing, depending on your metric, is something in excess of 99%.  But it seems that 99% is not good enough for the Trademark Office.  The Trademark Office would like to eliminate that last 1%, as may be seen in the Federal Register notice of May 30, 2018.  The Trademark Office proposes to mandate that only e-filing be used for trademark filings, thus eliminating the option of paper filing except in certain narrow situations.

When I was first in practice, pretty much the only way that a group of trademark practitioners could make their view heard in a rulemaking proceeding was through a professional or industry association such as INTA or AIPLA.  In recent years, however, the E-Trademarks listserv has submitted comments.  You can see comments that the listserv submitted in 2016.  And just yesterday the E-Trademarks listserv submitted comments in the present rulemaking.  You can see the comments here.




3 Replies to “Should USPTO ban non-electronic trademark filings?”

  1. Just to clarify, the USPTO is dissatisfied not with the 99.96% electronic filing of applications but with the (currently) 87.9% of applications that proceed to registration without any paper filings. They want users to go through the entire registration process electronically. So it isn’t really the applications themselves they seem to be concerned with but instead it is those applicants who persist in filing other forms on paper.

    1. Yes, you’re right, I guess the focus of the rulemaking is not only to beat down the number of initial applications that are on paper but also the number of follow-on filings that are on paper.

      The problem (as pointed out in the listserv comments) is that most non-electronic filings (at least, most non-electronic filings by the members of the listserv) are not at all due to “persisting” in filing things on paper. The non-electronic filings are because of other things that are wholly and solely within the USPTO’s control.

      For example some non-electronic filings happen because USPTO has failed to provide a TEAS form that covers the task. The way to make that non-electronic filing go away is not to promulgate a rule outlawing non-electronic filing. The way to make that non-electronic filing go away is to provide a TEAS form that covers the task.

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