Date: April 29, 2008 

To: Commissioner of Trademarks 

From: Fross Zelnick Lehrman & Zissu, P.C. 

Submitted Via: TMMailingrules@usoto.gov 

Attn: Mary Hannon 

Ile: Notice of Prooosed Rule isnd Reauest for Comments <:oncemine Certificate 
of 

Mail Proceclurcs lleported at 11079 Petleri~lI leeister, Vul. 73, No. 41 (Februarv 
20, 

2008) 

These are the comments of Fross Zelnick Lehrman & Zissu, P.C., a New Yorkbased 

law firm that practices extensively in the field of trademark law and before the 

USPTO, concerning the proposed new rules to amend Trademark Rules 2.197 and 
2.198 

to exclude certain specified filings in trademark applications for which corresponding 

electronic forms are available in TEAS from Express Mail, certificate of mailing and 

certificate of facsimile transmittal filing procedures. See 11079 Federal Register, Vol. 

73, No. 41 (February 29,2008) (copy attached). 

These procedures (hereafter referred to collectively as "Certificate of Mail 

Procedures") credit the filing of certain trademark documents as of the date of deposit 

with the U.S. Postal Service or of fax transmission to the USPTO. Certificate of Mail 

Procedures apply to numerous time-sensitive trademark filings, including responses to 

examining attorney office actions, statements of use, amendments to allege use, 
requests 

for reconsideration. reauests for extension of time to file a statement of use. reauests 
for , . , A 

reinstatement, petitions to revive, Section 8 affidavits, and many other necessary 
filings 

submitted in trademark applications and registrations. Used and relied upon 
extensively . . 

by applicants, registrants and practitioners for decades, the Certificate o f ~ a iplro 
cedures 

provide a highly reliable, efficient and convenient means of ensuring timely filing to 
meet 

outstanding deadlines. 

We strongly oppose the proposed rules. They are unnecessary and have no 

apparent or even claimed benefit for applicants, registrants and practitioners. Instead 
of a 

step forward to embrace developing technologies, this change would be a step 
backward 

which coerces reliance on TEAS, which is not yet as flexible as paper filings. 

The proposed rules provide no explanation or description of why the USPTO feels 

this drastic step is necessary or why the Certificate of Mail Procedures cannot be 

maintained along with TEAS filings. Indeed, the patent side is unaffected by this 


proposed rule change and will continue to accept paper filings, and the USPTO will 

continue to handle a very large volume of mail and fax correspondence. Clearly, there 

are no benefits to filers in removing procedures that guarantee filing date certainty in 

paper filings, especially where TEAS is not adequate or the best option to meet filing 

needs and ensure accuracy in the USPTO's databases. 

The proposed rules, therefore, are unnecessary and represent a solution in search 

of a problem. Removing mechanisms to provide filing date certainty for paper filings 

will unduly burden and inconvenience filers by taking away a valuable customer 
service. 

Malting the Certificate of Mail Procedures unavailable simply in order to promote on-
line 

filing is misplaced. 

Instead of considering the customer service benefit afforded by Certificate of Mail 

Procedures, the USPTO instead states they are "no longer necessary" as TEAS offers 
a 

better alternative. We submit that this determination is best left to those who utilize 
the 

TEAS system, namely applicants, registrants and practitioners. Where possible, this 
firm 

has increasingly sought to file trademark correspondence with the USPTO on-line 

through TEAS and will continue doing so. In some instances, TEAS does provide a 

better alternative to filing on paper. However, as a large-volume filer, we routinely 

encounter numerous circumstances in which TEAS does not offer a better alternative 
to 

filing on paper. Examples of these circumstances are set forth below. In some cases, 

TEAS cannot be made to fit a particular type of filing, even though a "form" is 
available. 

Thus, we strongly disagree with the USPTO's contention that the Certificate of Mail 

Procedures are no longer necessary. 

We have documented numerous instances where TEAS forms proved inadequate. 

These include: 

1) The inability to file a divisional request through TEAS where called for in a 
statement 

of use or allegation of use filing; 

2) Not being able to print out uploaded versions of evidence, specimens or other 

attachments being submitted through TEAS. 

3) When deleting the ITU portion of a dual-basis class following issuance of the 
Notice 

of Allowance, the TEAS form still calculates the extension fee due for that class. 

4) Deleting one class from an application and adding two classes requires two fees to 
be 

paid, rather than applying the fee paid for the deleted class to the new class. 

5) Forms only provide room for one "additional statement"; multiple statements in 
this 

field cannot be separated, such as by hard returns. In addition, these statements are 


frequently overlooked. 

6) PDF's for specimens often do not upload correctly. 

7) Reviving an application abandoned during the post-Notice of Allowance stage 

requires that both a Petition to Revive and a Request for an Extension of Time to file 

Statement of Use be filed simultaneously. These are two different documents making 

two different types of statements. However, the TEAS form provides a space for only 

one individual to sign both forms, even though it may be more appropriate for a 

practitioner to sign the petition to revive, but the applicant to sign the extension 
request 

with its accompanying declaration of a continuing bona fide intent. 

8) Sometimes having more than one Internet browser window open with more than 
one 

TEAS form in process at the same time causes data from one form to migrate to the 
other. 

This poses a severe limitation for a high volume law practice like ours. 

9) Filing a response through TEAS to a priority action issued after a final action is not 

possible. 

10) In order to delete classes/goods in Section 8 filings, the registrant must check a 
box 

saying that the mark is not in use, when this may not be the case. 

1 I) Joint applicants in application/registration generate two signature fields and 
require 

both fields to be completed, even though only one signature is required (as with a 

renewal). 

12) Substitute drawings of marks are better filed on paper since digitization distorts 
them 

and resolution discrepancies create "color" tints where no color exists. 

13) Some information entered into TEAS does not show up when form is forwarded 
to 

applicant for signature, e.g., selection of the box that mark is in standard characters. 

14) It is not possible to allege both use and excusable non-use in the alternative in a 

Section 8 TEAS form. 

15) Long addresses for applicants can be too long for the address field in TEAS. 

Moreover, international addresses that do not conform to U.S. formats are often 
truncated 

or presented improperly. (At this time, the USPTO's suggested workaround is to 
submit 

the proper and complete address on paper). 

16) Changing basis to add 44(e) and delete l(b) is not possible through TEAS where 
the 

application is not suspended or suspended on different grounds (need to request 
removal 

from suspension). 

17) When some goods are filed on the basis of use in commerce and other goods are 

filed on the basis of 44(d) or (e), the TEAS filing causes the USPTO frequently to 


misstate the goods under the appropriate basis. 

Perhaps the majority of filings submitted through TEAS do not encounter these 

types of problems. But the proposed rules are directed to making TEAS not just the 

preponderant filing method, but the exclusive method of filing with filing date 
certainty. 

Any shortcomings of the TEAS system like those described above would compel 
filers, 

having no other recourse, to give up filing date certainty and rely on the vagaries of 
the 

U.S. Postal Service, or, where a deadline is looming, arrange for a Washington firm to 

hand-carry the filing to the PTO. 

It is clear from the above that the proposed rules would adversely impact largevolume 

filers, such as our firm, as well as large-volume corporate filers, who frequently 

encounter difficult and complex filing issues that do not fit readily into the TEAS 
forms. 

In other words, the proposed rules would needlessly inconvenience the USPTO's 
largest 

customers. Moreover, the resulting pressure on the USPTO to promptly and 
continually 

update the TEAS forms and system will be far greater where TEAS is intended to be 
the 

onlyjling rnediaprovidingfiling date certainty. 

The proposed rules also discriminate against non-Washington-based filers, who 

do not have the option to hand-deliver documents in order to receive a same-day 
filing 

stamp. 

A back-up system of paper filing certainty such as the Certificate of Mail 

Procedures provide an additional level of customer service that ensures filing date 

certainty where paper filings prove necessary or more efficient. Customer satisfaction 

and USPTO efficiency are both enhanced by maintaining Certificate of Mail 
Procedures 

alongside TEAS filing availability. 

At the very least, giving up the certainty and flexibility afforded by the paper 

filing Certificate of Mailing Procedures removes a valuable back-up filing procedure 
that 

can be employed when on-line systems are down, or otherwise malfunction (whether 
this 

occurs on the server or user ends). 

The Notice's proposal that paper filing via the Certificate of Mailing Procedures 

would be permitted when TEAS is down, if evidenced by TEAS service 
announcements, 

error messages, and help desk correspondence, is an inadequate and incomplete 
measure. 

This tvve of limited "fallback" vosition is insufficient because f 1) vroblems other 
than .A \ , A 


those producing this type of "excuse" can prevent a successful TEAS filing (such as 

problems with uploading PDF attachments), and (2) user problems with accessing the 

system (such as ;emporary lack of access to the liternet, loss of electricity, or internal 

computer network problems) can render TEAS just as unavailable as if the system 
was 

down, but would not qualify for this exception. In addition, it wastes time if, for 

example, someone in our firm reports that the system is down; everyone having a 
filing 

would still have to go through the time-consuming entry process to get to the end and 

have the "error" statement issue to secure the date for a paper filing. 

The explanation accompanying the proposed rule change states that situations 

where TEAS is unavailable due to technical problems are "rare." Rarity of system 

outages is a relative concept. Our firm would not characterize their frequency as 
"rare." 

Over a three-month span, between September and November of 2007, we 
encountered 

interruptions in service on at least six occasions. With respect to interruptions that are 

not for scheduled maintenance, the outages usually do not last for more than a few 
hours 

at a time, but they are persistent. Since there is no consistent procedure for notifying 

Date: April 29, 2008 

To: Commissioner of Trademarks 

From: Fross Zelnick Lehrman & Zissu, P.C. 

Submitted Via: TMMailingrules@usoto.gov 

Attn: Mary Hannon 

Ile: Notice of Prooosed Rule isnd Reauest for Comments <:oncemine Certificate 
of 

Mail Proceclurcs lleported at 11079 Petleri~lI leeister, Vul. 73, No. 41 (Februarv 
20, 

2008) 

These are the comments of Fross Zelnick Lehrman & Zissu, P.C., a New Yorkbased 

law firm that practices extensively in the field of trademark law and before the 

USPTO, concerning the proposed new rules to amend Trademark Rules 2.197 and 
2.198 

to exclude certain specified filings in trademark applications for which corresponding 

electronic forms are available in TEAS from Express Mail, certificate of mailing and 

certificate of facsimile transmittal filing procedures. See 11079 Federal Register, Vol. 

73, No. 41 (February 29,2008) (copy attached). 

These procedures (hereafter referred to collectively as "Certificate of Mail 

Procedures") credit the filing of certain trademark documents as of the date of deposit 

with the U.S. Postal Service or of fax transmission to the USPTO. Certificate of Mail 

Procedures apply to numerous time-sensitive trademark filings, including responses to 

examining attorney office actions, statements of use, amendments to allege use, 
requests 


for reconsideration. reauests for extension of time to file a statement of use. reauests 
for , . , A 

reinstatement, petitions to revive, Section 8 affidavits, and many other necessary 
filings 

submitted in trademark applications and registrations. Used and relied upon 
extensively . . 

by applicants, registrants and practitioners for decades, the Certificate o f ~ a iplro 
cedures 

provide a highly reliable, efficient and convenient means of ensuring timely filing to 
meet 

outstanding deadlines. 

We strongly oppose the proposed rules. They are unnecessary and have no 

apparent or even claimed benefit for applicants, registrants and practitioners. Instead 
of a 

step forward to embrace developing technologies, this change would be a step 
backward 

which coerces reliance on TEAS, which is not yet as flexible as paper filings. 

The proposed rules provide no explanation or description of why the USPTO feels 

this drastic step is necessary or why the Certificate of Mail Procedures cannot be 

maintained along with TEAS filings. Indeed, the patent side is unaffected by this 

proposed rule change and will continue to accept paper filings, and the USPTO will 

continue to handle a very large volume of mail and fax correspondence. Clearly, there 

are no benefits to filers in removing procedures that guarantee filing date certainty in 

paper filings, especially where TEAS is not adequate or the best option to meet filing 

needs and ensure accuracy in the USPTO's databases. 

The proposed rules, therefore, are unnecessary and represent a solution in search 

of a problem. Removing mechanisms to provide filing date certainty for paper filings 

will unduly burden and inconvenience filers by taking away a valuable customer 
service. 

Malting the Certificate of Mail Procedures unavailable simply in order to promote on-
line 

filing is misplaced. 

Instead of considering the customer service benefit afforded by Certificate of Mail 

Procedures, the USPTO instead states they are "no longer necessary" as TEAS offers 
a 

better alternative. We submit that this determination is best left to those who utilize 
the 

TEAS system, namely applicants, registrants and practitioners. Where possible, this 
firm 

has increasingly sought to file trademark correspondence with the USPTO on-line 

through TEAS and will continue doing so. In some instances, TEAS does provide a 

better alternative to filing on paper. However, as a large-volume filer, we routinely 

encounter numerous circumstances in which TEAS does not offer a better alternative 
to 


filing on paper. Examples of these circumstances are set forth below. In some cases, 

TEAS cannot be made to fit a particular type of filing, even though a "form" is 
available. 

Thus, we strongly disagree with the USPTO's contention that the Certificate of Mail 

Procedures are no longer necessary. 

We have documented numerous instances where TEAS forms proved inadequate. 

These include: 

1) The inability to file a divisional request through TEAS where called for in a 
statement 

of use or allegation of use filing; 

2) Not being able to print out uploaded versions of evidence, specimens or other 

attachments being submitted through TEAS. 

3) When deleting the ITU portion of a dual-basis class following issuance of the 
Notice 

of Allowance, the TEAS form still calculates the extension fee due for that class. 

4) Deleting one class from an application and adding two classes requires two fees to 
be 

paid, rather than applying the fee paid for the deleted class to the new class. 

5) Forms only provide room for one "additional statement"; multiple statements in 
this 

field cannot be separated, such as by hard returns. In addition, these statements are 

frequently overlooked. 

6) PDF's for specimens often do not upload correctly. 

7) Reviving an application abandoned during the post-Notice of Allowance stage 

requires that both a Petition to Revive and a Request for an Extension of Time to file 

Statement of Use be filed simultaneously. These are two different documents making 

two different types of statements. However, the TEAS form provides a space for only 

one individual to sign both forms, even though it may be more appropriate for a 

practitioner to sign the petition to revive, but the applicant to sign the extension 
request 

with its accompanying declaration of a continuing bona fide intent. 

8) Sometimes having more than one Internet browser window open with more than 
one 

TEAS form in process at the same time causes data from one form to migrate to the 
other. 

This poses a severe limitation for a high volume law practice like ours. 

9) Filing a response through TEAS to a priority action issued after a final action is not 

possible. 

10) In order to delete classes/goods in Section 8 filings, the registrant must check a 
box 

saying that the mark is not in use, when this may not be the case. 

1 I) Joint applicants in application/registration generate two signature fields and 
require 

both fields to be completed, even though only one signature is required (as with a 


renewal). 

12) Substitute drawings of marks are better filed on paper since digitization distorts 
them 

and resolution discrepancies create "color" tints where no color exists. 

13) Some information entered into TEAS does not show up when form is forwarded 
to 

applicant for signature, e.g., selection of the box that mark is in standard characters. 

14) It is not possible to allege both use and excusable non-use in the alternative in a 

Section 8 TEAS form. 

15) Long addresses for applicants can be too long for the address field in TEAS. 

Moreover, international addresses that do not conform to U.S. formats are often 
truncated 

or presented improperly. (At this time, the USPTO's suggested workaround is to 
submit 

the proper and complete address on paper). 

16) Changing basis to add 44(e) and delete l(b) is not possible through TEAS where 
the 

application is not suspended or suspended on different grounds (need to request 
removal 

from suspension). 

17) When some goods are filed on the basis of use in commerce and other goods are 

filed on the basis of 44(d) or (e), the TEAS filing causes the USPTO frequently to 

misstate the goods under the appropriate basis. 

Perhaps the majority of filings submitted through TEAS do not encounter these 

types of problems. But the proposed rules are directed to making TEAS not just the 

preponderant filing method, but the exclusive method of filing with filing date 
certainty. 

Any shortcomings of the TEAS system like those described above would compel 
filers, 

having no other recourse, to give up filing date certainty and rely on the vagaries of 
the 

U.S. Postal Service, or, where a deadline is looming, arrange for a Washington firm to 

hand-carry the filing to the PTO. 

It is clear from the above that the proposed rules would adversely impact largevolume 

filers, such as our firm, as well as large-volume corporate filers, who frequently 

encounter difficult and complex filing issues that do not fit readily into the TEAS 
forms. 

In other words, the proposed rules would needlessly inconvenience the USPTO's 
largest 

customers. Moreover, the resulting pressure on the USPTO to promptly and 
continually 

update the TEAS forms and system will be far greater where TEAS is intended to be 
the 

onlyjling rnediaprovidingfiling date certainty. 

The proposed rules also discriminate against non-Washington-based filers, who 


do not have the option to hand-deliver documents in order to receive a same-day 
filing 

stamp. 

A back-up system of paper filing certainty such as the Certificate of Mail 

Procedures provide an additional level of customer service that ensures filing date 

certainty where paper filings prove necessary or more efficient. Customer satisfaction 

and USPTO efficiency are both enhanced by maintaining Certificate of Mail 
Procedures 

alongside TEAS filing availability. 

At the very least, giving up the certainty and flexibility afforded by the paper 

filing Certificate of Mailing Procedures removes a valuable back-up filing procedure 
that 

can be employed when on-line systems are down, or otherwise malfunction (whether 
this 

occurs on the server or user ends). 

The Notice's proposal that paper filing via the Certificate of Mailing Procedures 

would be permitted when TEAS is down, if evidenced by TEAS service 
announcements, 

error messages, and help desk correspondence, is an inadequate and incomplete 
measure. 

This tvve of limited "fallback" vosition is insufficient because f 1) vroblems other 
than .A \ , A 

those producing this type of "excuse" can prevent a successful TEAS filing (such as 

problems with uploading PDF attachments), and (2) user problems with accessing the 

system (such as ;emporary lack of access to the liternet, loss of electricity, or internal 

computer network problems) can render TEAS just as unavailable as if the system 
was 

down, but would not qualify for this exception. In addition, it wastes time if, for 

example, someone in our firm reports that the system is down; everyone having a 
filing 

would still have to go through the time-consuming entry process to get to the end and 

have the "error" statement issue to secure the date for a paper filing. 

The explanation accompanying the proposed rule change states that situations 

where TEAS is unavailable due to technical problems are "rare." Rarity of system 

outages is a relative concept. Our firm would not characterize their frequency as 
"rare." 

Over a three-month span, between September and November of 2007, we 
encountered 

interruptions in service on at least six occasions. With respect to interruptions that are 

not for scheduled maintenance, the outages usually do not last for more than a few 
hours 

at a time, but they are persistent. Since there is no consistent procedure for notifying 

people who attempted a filing during the outage period that the system is back up, 
users 


must simply keep re-trying the filing. This causes problems in a busy practice like 
ours, 

where assistants working for numerous attorneys have numerous documents to 
prepare 

and file every day. 

For all these reasons, we urge the USPTO to withdraw the proposed rule change. 

Our firm appreciates the opportunity afforded to comment on the abovereferenced 

rule change proposal.