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What is the new USPTO Trademark Product Line (TMPL)? The USPTO reports in its FY 2020 United States Patent and Trademark Office PERFORMANCE AND ACCOUNTABILITY REPORT (https://www.uspto.gov/sites/default/files/documents/USPTOFY20PAR.pdf p. 115), that it is changing the way that it manages trademarks to a product management system rather than project management. The new system is intended to streamline the lifecycle of a trademark application and will include the legacy products. The Trademark Product Lines are TM External, TM Exam, TM International, TM Content Management Systems, TM Data and Analytics, and TTAB. See https://www.uspto.gov/sites/default/files/documents/TPAC-
TRADEMARK IR PROGRAM [aka Trademark Product Line] (from https://www.uspto.gov/sites/default/files/documents/fy23pbr.pdf) The mission of the Trademark IR Program, or Trademark Product Line, is to leverage IT to optimize and enhance trademark and TTAB operations. The Trademark Product Line is continuing to re- are to replace the Trademark Reporting and Monitoring (TRAM) system, the Trademark Electronic Application System (TEAS), and to leverage AI and RPA. These priorities support trademark examination and help with a recent filing surge that has caused a spike in unexamined application inventory (classes) and first action pendency metrics that exceed the performance target. • Replace TRAM: Uncertain support of this archaic mainframe system and increased maintenance costs are significant pain points. The anticipated outcomes from six teams that are focusing on TRAM replacement across FY 2022 and FY 2023 are a $10 million cost avoidance in FY 2024 when the mainframe lease payment is due, reduced cost associated with maintaining two systems of record, and reduced technical debt. • Replace TEAS: Limited security features, limited failover capabilities, and aging software that is costly to maintain are hampering TEAS. The USPTO will replace TEAS with a secure, stable, reliable, and user- • Leverage artificial intelligence and robotic process automation (AI/RPA): The current trademark examination process is costly and contains some inefficiencies. AI/RPA investments offer greater consistency in the trademark examination process, reduced trademark examination costs through increased automation, and reduced trademark application pre- with trademark applications. A progress report on the USPTO Trademark Product Line is available at https://www.uspto.gov/sites/default/files/documents/TPAC- Until the USPTO Trademark Product Line is modernized, TEAS Plus and TEAS Standard are still the two major types of USPTO trademark applications TEAS is the Trademark Electronic Application System currently used by the USPTO. Of the two major types of applications, TEAS Plus and TEAS Standard, TEAS PLUS is designed to be easier for both the applicant and the USPTO and comes with a reduced fee. Currently TEAS Plus applications register about 2 months faster than TEAS Standard applications. However, TEAS Standard has fewer INITIAL requirements to receive a filing date. DESCRIPTIONS OF GOODS OR SERVICES In TEAS Plus, the applicant can only choose goods and services identifications that are already in the goods and services ID manual and have already been approved for use by the USPTO. Using an already approved description can save and applicant time. The downside is that an applicant may pick an existing description that is not the best description(s) or a description that describes part of the business but not a part of the business that benefits others. TEAS Standard applicants do not need to select an identification of goods and/or services from the Trademark ID Manual or satisfy the many TEAS Plus requirements (see Trademark Rule § 2.22 Requirements for a TEAS Plus application).at the time of filing. See example of TEAS Standard form. REFUSAL RATES The rate of refusals for TEAS plus is lower (half that of TEAS Standard) than other TEAS applications. About 45% of TEAS PLUS applications publish for opposition without a refusal (55% are refused). If you need a custom goods/services category, regular TEAS (TEAS Standard) may be the best way to go. But, choosing a goods/service category yourself and doing it strategically can be a way to avoid refusal and opposition. Being too broad with a goods and services ID may open you up to more likelihood of confusion and too narrow of a goods and services ID can be limiting. Along with the more standard identification of goods or service process in TEAS Plus comes extra requirements in order to use TEAS PLUS such as those found in the chart below. Failure to meet all the TEAS plus extra requirements in the initial application may result in a refusal and a requirement to now pay the initial fee savings in order to respond to the refusal and a change of the application to TEAS. Examples would be the failure to provide a translation of a foreign term or misuse of the fill- Benefits of Using TEAS Standard: Advanced Application May Avoid Likelihood of Confusion TEAS Standard can be a benefit over TEAS Plus if the user can craft a goods/services identification that makes it clear that there is no conflict between the new application being filed and an existing prior pending application or registration that is ‘confusingly similar’. (Section 2(d) Likelihood of confusion refusals are the most common refusal.) Let’s say that a search of TESS for Product R showed that someone already has registered a ‘similar’ trademark for Product X. If Product X is contained in the category AB, applying for a new mark in AB using TEAS Plus because it is cheaper will probably cause a refusal or opposition. But, if Product R can be accurately described using a TEAS Standard category (or possibly a TEAS Plus) that is not contained in AB because the products really aren’t ‘related’, a refusal or opposition can potentially be avoided. If the goods and services are related and would be confused, changing the ID should make no difference and the mark should still be refused. Learning what ‘terms of art’ mean like ‘confusingly similar,’ ‘similar’ and ‘related’ to avoid refusals and oppositions requires advanced skills in trademark law. Case law, which is constantly changing, may support that the goods or services are not related. A Not Just Patents® trademark e- Benefit of Using TEAS Plus: Preparation Pays Off in Time & Money & Less Refusals IF You fill out the application correctly TEAS Plus applications issue faster because the goods and services categories will not be refused for indefiniteness or other reasons. (ID refusals are very common.) TEAS Plus applications also issue faster because all of the necessary information has to be prepared and inputted at the time of the application in order to file the application. A TEAS Standard applicant will still have to supply almost all of the same information but they will have to do it in a Response to Office Action when the application is refused for not having all the necessary information. Using up a nonfinal response (you usually only get one) to provide basic information may be costly in money and in time. Responses to Office Actions take time and can involve attorneys fee. If you are applying for a design mark that is difficult to describe, TEAS Standard may be better than TEAS Plus because the examiner will write the description for you. If you fail to describe a difficult design mark well enough on TEAS Plus, the examiner or their paralegal may write it for you and charge the $100 fee to convert to TEAS Standard.
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See Why Not Just Patents? if you have already applied and been refused. See also Why Hire A Private Trademark Attorney? Don’t assume that protecting your reputation and legal rights is too expensive, abandoning your trademark registration because of problems from office actions and refusals may result in a larger losses- |
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Comparison Chart TEAS Plus vs TEAS Standard extracted from https://www.uspto.gov/trademarks- |
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Questions/Requirements |
TEAS Plus |
TEAS Standard |
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What is the filing fee per class of goods/services? |
$250 |
$350 |
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Must the application include an e- |
Yes |
Yes |
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Must certain subsequent application- |
Yes |
Yes |
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Must the identification of goods/services be selected from the USPTO Trademark ID Manual? |
Yes |
No |
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Must the filing fee per class for all classes listed in the application be paid upfront? |
Yes |
No |
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Must certain statements regarding the mark be provided in the application as filed, if applicable (e.g., translation statement, claim of ownership, color claim and description, if applicable)? |
Yes - |
No |
TrademarkProductLine.com
Info TEAS Standard and TEAS Plus trademark applications
TMk®
Not Just Patents®
Aim Higher® Facts Matter
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(Calls are screened for ‘trademark’ and other applicable reasons for the call)
